^^:,  'Q^U  iiwfifS^T.TT  TT^rv^'yi-'yz  -ixj:x'\s'j-ji'.'--jrx 


(,mim^^/^^^B^ 


THE  LIBRARY 

OF 

THE  UNIVERSITY 

OF  CALIFORNIA 

LOS  ANGELES 

SCHOOL  OF  LAW 


9l 


,il<( 


o 


FLINT  &  MacK/VY 

1232  Rowan  Building 


THE  LAW  OF 

UNFAIR  COMPETITION 


AND 


TRADE-MARKS 


WITH  CHAPTERS  ON 

GOOD-WILL,  TRADE  SECRETS,  DEFAMATION  OF  COMPETITORS 
AND  THEIR  GOODS,  REGISTRATION  OF  TRADE-MARKS 
UNDER  THE  FEDERAL  TRADE-MARK  ACT, 
PRICE  CUTTING,  ETC. 


SECOND    EDITION 


BY 

HARRY  D.  [VIMS,  M.  A. 

OF  THE  NEW  YORK  BAR 


"The  law  is  not  made  for  the  protection  of  experts,  but  for  the  public,  —  that  vast  multi- 
tude which  includes  the  ignorant,  the  unthinking,  and  the  credulous,  who,  in  making 
purchases,  do  not  stop  to  analyze,  but  are  governed  by  appearances  and  general  impres- 
sione."    Coxe,  J.  in  Florence  Mfg.  Co.  v.    Dowd,  178  Fed.  75. 


NEW  YORK 

BAKER,  VOORHIS  AND  COMPANY 

1917 


1917 


Copyright,  1909 

By 
Harry  D.  Nims 


Copyright,  1917 

By 
Harry  D.  Nims 


:  INTRODUCTION  TO  SECOND  EDITION 

The  law  of  Unfair  Competition  is  a  popular  branch  of  the  law. 
It  has  a  direct  bearing  on  the  lives  of  most  of  us,  and  is  of  gen- 
eral interest  for  that  reason.  It  deals  fundamentally  and  spe- 
cifically with  one  of  the  most  important  phases  of  everyday  hfe, — • 
the  struggle  for  a  living.  It  is  largely  free  from  legal  red  tape  and 
technicahty.  It  consists  of  one  simple  rule, — "Compete  honestly  ". 
This  rule  is  not  a  statute,  the  creation  of  a  Congress  or  a  Legis- 
lature. It  is  a  statement  of  the  public  sentiment  of  the  day.  The 
old  rules, — ''He  who  buys  must  look  out  for  himself,"  "Every- 
thing goes  in  a  trade,"  "Business  is  business," — have  been  dis- 
carded, and  a  better  time  has  come. 

This  law  is  of  general  interest,  too,  because  business  is  no  longer 
entirely  in  the  hands  of  individuals.  Our  hfe  depends  more  than  we 
sometimes  appreciate,  on  great  soulless,  invisible  and,  to  the  aver- 
age man,  un-understandable  forces,  which  we  call  corporations. 
In  the  past,  there  has  been  cause  to  fear  them,  and  many  instinc- 
tively turn  to  the  law  for  protection  in  their  dealings  with  them. 
Men  believe  they  can  deal  personally  and  adequately  with 
a  competitor  who  is  a  fellow-townsman,  even  though  he  has 
great  possessions,  while  they  often  feel  helpless  in  a  struggle  with 
a  corporation.  The  demand  upon  the  law  to  protect  the  small 
business  concern  against  oppressive  competition  has  been  persist- 
ent in  the  past  twenty-five  years,  and  the  rules  of  Unfair  Compe- 
tition Law  form  one  of  the  principal  answers  of  the  courts  to  this 
demand. 

This  law  is  of  special  interest  to  the  lawyer  and  to  the  political 
economist,  because  it  has  demonstrated  that  our  courts  of  equity 
can  be  depended  upon  to  adjust  the  law  to  the  vital  needs  of  the 
times.  In  Rome,  the  Prsetor,  the  forerunner  of  our  equity  judge, 
sat  at  the  city  gate  clothed  with  power  to  relieve  the  people  in 
cases  where  the  rigorous  judgments  of  the  courts,  which  enforced 
the  letter  of  the  law,  worked  needless  hardships  and  injustice. 
The  equity  judges  of  to-day,  as  they  have  built  up  the  law  of  un- 
fair competition  in  their  decisions  dealing  with  the  hardships  of 
modern  trade,  have  shown  the  community  that  the  great  funda- 

iii 

735575 


iv  Introduction  to  Second  Edition 

mental  rules  of  honesty  and  fair  dealing  are  still  the  touch-stones 
by  which  the  relations  of  commercial  life  are  to  be  measured. 

The  law  of  Unfair  Competition  might  well  be  called  the  book 
of  rules  of  the  business  game.  It  gives  far  greater  protection 
against  unfair  practices  used  in  competition  than  is  realized  by  the 
average  business  man.  It  is  still  in  its  infancy.  Its  possibilities 
of  growth  and  effectiveness  arc  almost  unlimited.  It  started  by 
regulating  only  one  unfair  practice,  viz:  substitution,  or  the  act 
of  offering  or  selling  one  brand  of  goods  when  the  buyer  has  asked 
for  another  brand.  To-day  its  principles  are  being  applied  to 
most  commercial  practices  that  are  unfair,  or,  as  the  French  law 
terms  it,  disloyal. 

The  rules  of  Unfair  Competition  are  not  arbitrary  pronounce- 
ments of  courts.  The  formulation  of  these  rules  has  been  an 
almost  spontaneous  process,  growing  out  of  the  discussion  and 
decision  of  cases  where  injustice  and  wrong  have  been  suffered 
because  of  the  use  of  oppressive  and  unfair  methods  of  competi- 
tion. These  cases  have  been  decided,  not  by  the  application  of 
abstruse  technical  legal  doctrines,  but  by  the  application  of  the 
same  simple  standards  of  right  and  wrong  that  are  recognized 
and  applied  by  the  public  in  daily  life  outside  the  court  house. 

This  law  promises  great  things  for  the  future  of  our  business 
life.  When  the  great  war  ends,  there  is  every  reason  to  believe 
that  men  will  turn  to  business  problems  with  a  clarified  vision 
of  right  and  fairness.  When  that  time  comes,  there  should 
come  with  it  a  fairer  chance  for  all.  There  should  be  cleaner, 
''squarer"  business  (which,  it  is  already  being  demonstrated, 
can  exist  without  curtailing  our  competitive  system),  and  in  our 
commercial  life  of  the  future,  this  body  of  law  should  play  a  most 
important  and  salutary  part. 

In  preparing  this  edition,  the  book  has  been  largely  rewritten 
and  re-arranged.  The  two  editions  do  not  correspond  as  to  sec- 
tion or  page  numbers. 

The  author  is  greatly  indebted  to  Cleon  J.  Sawyer,  Esq.,  of  the 
New  York  bar,  for  many  helpful  suggestions  regarding  this  book; 
also  to  Clinton  deR.  Combes,  Esq.,  and  Frederick  M.  Herrick,  Esq., 
of  the  New  York  bar,  for  painstaking  assistance  in  its  preparation. 

HARRY  D.  NIMS. 
32  Nassau  Street,  New  York. 

July  26,  1917. 


INTRODUCTION  TO  FIRST  EDITION 

There  is  a  maxim  as  old  as  law,  that  there  can  be  no  right 
without  a  remedy,  but  it  is  equally  true  that  men  are  constantly 
acquiring  new  rights  and  new  kinds  of  property  almost  unknown 
to  the  law,  and  in  lawful  ways  are  putting  themselves  into  new 
positions,  in  which  they  soon  suffer  wrongs  which  the  courts  seem 
powerless  to  prevent,  or  to  end.  It  seems,  sometimes,  as  if  the 
progress  of  the  unscrupulous  merchant  and  manufacturer  in 
inventing  new  schemes  for  filching  away  the  trade  of  others  un- 
fairly, has  been  far  more  rapid  than  that  of  the  courts  in  finding 
ways  of  protecting  the  honest  business  man  against  such  schemes. 
But  whatever  has  been  the  activity  of  these  unscrupulous  mem- 
bers of  the  business  community  in  the  last  decade,  during  this 
time  very  marked  progress  has  been  made  by  the  law  in  develop- 
ing rules  and  remedies  relating  to  dishonest  and  unfair  commer- 
cial practices. 

It  is  but  a  few  years  since  cases  involving  applications  for 
relief  against  unfair  dealing  were  indifferently  classed  as  trade- 
mark cases  or  injunction  cases,  or  hidden  away  in  digests  under 
headings  most  surprisingly  disassociated  from  ideas  conveyed 
by  the  term  Unfair  Competition.  Now  we  find  that  the  phrases 
"Passing  Off,"  in  England,  "Concurrence  Deloyale"  in 
France  and  "Unfair  Competition"  in  America  are  recognized 
legal  terms,  embracing  rules  of  law  applicable  to  cases  of  this 
character. 

One  reason  for  the  growth  of  the  law  of  unfair  competition  is 
probably  to  be  found  in  the  effects  of  the  delay  incident  to  suits 
at  law  for  damages.  Business  lost  and  credit  injured  by  mis- 
representation or  threats  made  by  malicious  or  unscrupulous 
competitors,  injury  to  brands  of  goods  by  the  sale  of  inferior 
imitations,  injury  to  reputation  by  fraudulent  use  of  the  name 
of  a  business  house,  —  such  losses  cannot  be  compensated  for 
by  damages  recovered  at  the  end  of  a  tedious  suit  at  law,  occupy- 
ing perhaps  two  or  three  years.     Any  adequate  remedy  must 


vi  Introduction  to  First  Edition 

stop  the  injurious  acts  instanter,  and  this  can  be  afforded  only 
by  use  of  the  writ  of  injunction. 

The  law  of  unfair  competition  has  developed  in  part  also  in 
response  to  a  general  feeling  that  the  honest  and  fair-dealing 
merchant  is  entitled  to  the  fruits  of  his  skill  and  industry,  and 
must  be  protected  against  loss  caused  by  fraudulent  and  unfair 
methods  used  by  business  rivals.  It  is  a  recognition  by  the 
courts  of  the  duty  to  be  honest  and  fair  in  all  relations  of  business 
life.  This  is  one  of  the  most  healthful  signs  of  the  times.  The 
gradual  judicial  development  of  this  doctrine  is  an  embodiment 
of  the  principles  of  sound  common  sense,  business  morality, 
although  it  involves  nice  discriminations  between  what  may  and 
what  may  not  be  done  in  honorable  business  rivalry. 

Just  what  acts  are  to  be  included  in  the  term  competition  it 
is  hard  to  state.  Formerly,  business  houses  made  the  favor  of 
the  customer  the  principal  object  of  their  efforts.  Now  very 
often  the  customer  figures  little  —  the  struggle  being  to  obtain 
special  privilege,  monopoly  or  special  rates,  or  to  injure  a  com- 
petitor by  ousting  him  from  some  vantage  ground  he  has  gained, 
or  by  inducing  a  breach  of  his  contracts.  All  these  acts  are  a 
part  of  the  struggle  for  commercial  success.  They  are  acts  done 
in  business  competition,  and  some  of  them  are  fair  and  honest 
methods  of  business  rivalry  and  some  are  not.  No  attempt  is 
here  made  to  deal  with  all  of  them.  But  the  fundamental  rule 
that  in  business  rivalry,  no  unfair  or  dishonest  methods  shall  be 
tolerated,  applies,  on  principle,  to  all  of  them. 

Closely  akin  to  the  doctrines  involved  in  the  cases  which  are 
now  definitely  classed^  as  unfair  competition  cases,  are  many  un- 
decided questions  of  large  moment,  just  now.  The  right  of  per- 
sons, and  especially  corporations  and  associations,  to  compete 
by  trying  to  eliminate  and  efface  rivals  from  the  race;  the  right 
of  the  multitude,  acting  in  concert  to  do  acts  which  are  unques- 
tionably the  right  of  an  individual  acting  alone  to  do ;  the  legality 
of  acts  (otherwise  legal)  which  are  done  with  the  definite  intent 
to  unfairly  injure  another  but  done  merely  as  a  part  of  the  business 
struggle  to  succeed  and  make  money;  these  and  many  similar 
problems  are  yet  to  be  solved  in  the  light  of  present-day  con- 
ditions. 

Courts  and  legislatures  cannot  create  fairness  and  honesty. 
Men  must  be  free  to  manage  their  business  enterprises  in  their 


Introduction  to  First  Edition  vii 

own  way.  There  must  be  competition.  It  is  said  that  the  doc- 
trine, long  upheld  by  common  law,  that  competition  must  be 
free  and  unrestricted  has  brought  about  the  very  evil  of  monopoly 
which  the  doctrine  was  aimed  to  prevent.  Nevertheless,  com- 
petition cannot  be  abolished;  and  it  will  be  a  long  time  before 
it  ceases  to  play  a  very  important  and  beneficial  part  in  our 
civilization  if  its  rules  are  founded  in  fairness  and  honesty. 

Modern  science  has  transformed  into  wealth  much  that  in 
former  days  was  waste.  Similarly,  modern  conditions  have 
given  very  great  importance  and  value  to  parts  of  a  business 
which  formerly  were  considered  worthless.  And  now  the  question 
is  raised  as  to  whether  these  new  values  are  property,  —  the 
sort  of  property  which  equity  protects?  If  they  are,  then  the 
jurisdiction  of  our  equity  courts  seems  broader,  in  this  respect, 
than  is  usually  recognized. 

President  Taft  in  his  inaugural  address  in  1909,  says:  "The 
proposition  that  business  is  not  a  property  or  pecuniary  right 
which  can  be  protected  by  equitable  injunction  is  utterly  with- 
out foundation  in  precedent  or  reason.  The  proposition  is  usually 
linked  with  one  to  make  the  secondary  boycott  lawful.  Such  a 
proposition  is  at  variance  with  the  American  instinct,  and  will 
find  no  support  in  my  judgment  when  submitted  to  the  American 
people.  The  secondary  boycott  is  an  instrument  of  tyranny, 
and  ought  not  to  be  made  legitimate." 

In  the  following  pages  will  be  found  references  to  the  discus- 
sion as  to  the  power  of  equity  to  protect,  not  only  the  tangible 
parts  of  a  business,  but  also  its  intangible  rights  and  properties. 
The  right  decision  of  these  questions  is  of  far-reaching  importance 
to  the  manufacturer  and  trader  to-day,  for  unless  the  writ  of  in- 
junction is  preserved  in  its  present  form,  both  labor,  capital  and 
the  general  business  world  will  lose  their  most  effective  bulwark 
against  unfair  and  dishonest  business  practices. 

In  compiling,  arranging  and  interpreting  the  authorities  in- 
cluded, the  writer  has  been  very  greatly  aided  by  the  able  work 
of  Frederick  M.  Herri ck,  Esq.,  of  the  New  York  Bar,  and  he 
wishes  here  to  express  his  obligation  to  Mr.  Herrick  in  that 
regard. 

This  volume  refers  only  to  the  American  and  English  cases 
and  statutes.  There  are  French  statutes  dealing  with  various 
features  of  unfair  competition  and  many  decisions  of  French 


viii  Introduction  to  First  Edition 

courts  relating  to  it.  It  has  been  thought  wise  not  to  attempt 
to  treat  them  here,  but  instead  to  refer  the  reader  for  informa- 
tion to  such  works  as  M.  Pouillet's  book,  "Traite  des  Marques 
do  Fabriquc  et  de  la  Concurrence  Deloyale,"  Paris,  1906. 

HARRY  D.  NIMS. 
32  Nassau  Street,  New  York. 
April,  1909. 


TAELE  OF  CONTENTS 

CHAPTER  I 
The  Legal  Doctrine  of  Unfair  Competition 

PAGE 

Section  1.  Unfair  competition  is  not  a  subdivision  of  trade-mark  law 1 

2.  Historical:  early  cases  of  unfair  competition  in  America  and  England  4 

3.  The  law  of  unfair  competition  curtails  freedom  of  trade,  but  only 

of  trading  that  is  unfair 11 

4.  Definitions  of  unfair  competition 12 

CHAPTER  II 
Basis  of  the  Action  for  Unfair  Competition 

Section    5.  Legal  basis  of  the  action  for  unfair  competition 17 

6.  Grounds  of  the  action  for  unfair  competition 18 

7.  Theory  that  the  court  acts  to  promote  honesty  and  fair  dealing ...  18 

8.  Theory  that  the  court  aims  to  protect  the  purchasing  public 18 

9.  Theory  that  the  court  aims  to  protect,  not  rights  of  the  public,  but 

rights  and  property  of  individuals 21 

10.  Property  rights  in  marks  which  are  not  technical  trade-marka. ...  23 

11.  Exclusive  right  to  a  name  or  mark  not  necessary  to  action 26 

12.  Geographic  extent  of  trade  rights  based  on  priority 28 

CHAPTER  III 
Good-Will 

Section  13.  Definitions  of  good-will 32 

14.  Elements  of  good-will 35 

15.  Relation  of  good-will  to  trade-marks  and  trade  insignia 35 

16.  Good-will  protected  by  law  of  unfair  competition 36 

17.  Good-will  which  is  not  transferable  —  artists,  musicians,  etc 37 

18.  Sale  of  good-will  of  entire  property  —  rights  of  vendor 38 

19.  Presumption  that  no  one  intends  to  part  with  right  to  use  his  own 

name 39 

20.  Name  may  be  so  sold  as  to  preclude  the  owner  from  again  using 

it  in  the  same  business 39 

21.  Sale  of  business  site;  effect  of,  on  names 42 

22.  Sale  and  license  of  trade-mark  rights 45 

23.  Duty  to  prevent  confusion  resting  on  one  who  sells  his  business. . .  46 

24.  Transfer  of  portraits 47 

25.  Rights  of  a  manufacturer  as  to  his  good-will  in  a  name  under  which 

his  goods  are  sold,  not  by  him,  but  by  a  customer  of  his 47 

ix 


X  Contents 

PAOB 

Section  26.  Transfers  in  bankruptcy  and  in  assignments  for  creditors 48 

27.  Rights  of  retiring  stockholders  and  others  in  corporate  names 50 

28.  Soliciting  old  customers 51 

29.  Sale  of  name  or  business  by  originator  of  an  article 56 

30.  Effect  of  locality  on  transfers  of  a  business 57 

31.  Partners'  rights  in  the  partnership  name,  on  dissolution 57 

32.  Dissolution  by  death  of  a  partner 60 

33.  Transfers  by  descent  and  rights  of  descendants 62 

34.  Transfer  of  secret  formula? 64 

35.  Good-will,  valuation  of 64 


CHAPTER  IV 
Secondary  Meaning  ' 

Section  36.  General  discussion 66 

37.  Statements  of  the  general  rule 67 

38.  Geographic  limits  in  which  secondary  meaning  is  protected 72 

39.  Secondary  meaning  of  trade  phrases 75 

40.  Names  of  places 76 

41.  Existence  of  secondary  meaning  is  a  question  of  fact 77 

42.  Association  of  names  with  goods  the  identity  of  the  makers  of  which 

is  unknown 77 

43.  Ten-year  trade-mark  law 78 

CHAPTER  V 

Trade  Names — General  Principles 

Section  44.  Introductory 79 

45.  Business  names  as  distinguished  from  marks,  designs,  devices,  etc.  80 

46.  Difference  between  abstract  names  of  objects  and  trade  names. .  .  81 

47.  Lord  Kay's  summary  of  the  law  of  names 81 

48.  Names  considered  as  transitory  or  personal  and  as  local  or  fixed; 

hotel  names 82 

49.  Phrases  such  as  "Formerly  with"  and  "Successor  to,"  etc 86 

50.  General  or  common  names  of  an  article  and  names  descriptive  of 

construction  necessary  to  it 88 

51.  Unfamiliar  or  scientific  words  used  as  names  of  goods 90 

52.  Artificial  or  made-up  words 91 

53.  Names  appealing  to  the  eye  as  similar 93 

54.  Names  idem  sonans 95 

55.  Foreign  words  as  names  of  goods 99 

56.  Abbreviation  of  names  of  goods  —  nicknames 100 

57.  Fraudulent  use  of  coincidences  in  meaning  of  names 101 

58.  Numerals  and  letters  as  names  of  goods 103 

59.  Numerals  and  letters  used  to  designate  grade  of  goods 103 

60.  Numerals  indicating  source  or  origin 105 

61 .  Initials  as  names  of  goods 106 

62.  Numerals  used  to  designate  series,  etc 106 


Contents  xi 

PAGE 

Section  63.  Names  of  goods  intended  for  export 108 

64.  Signs 109 

65.  Street  addresses  etc 112 

66.  Use  of  suffix  "&  Co.,"  etc 114 


CHAPTER  VI 
Family  Names  or  Surnames,  as  Trade  Names 

Section  67.  Nature  of  the  right  in  one's  own  name 116 

68.  The  right  of  every  man  to  use  his  own  name  in  business:  its  charac- 

ter, and  misconceptions  regarding  it 117 

69.  Early  cases  dealing  with  the  use  of  personal  names 121 

70.  Explanatory  phrases  as  a  means  of  eliminating  confusion  in  family 

names 124 

7i.  The  inadequacy  of  the  explanatory  phrase  rule 133 

72.  Acquired  generic  or  secondary  meaning  of  personal  names 137 

73.  Family  names  as  generic  or  general  names  of  articles 143 

74.  Surnames  used  as  abbreviations 146 

75.  Names  made  up  of  surnames  qualified  by  other  words  or  symbols. .  148 

76.  Surnames  acquired  otherwise  than  by  descent 149 

77.  Voluntary  change  of  personal  name 151 

78.  Rights  acquired  by  him  who  first  uses  a  surname  in  business 152 

79.  Family  names  as  corporate  names 153 

80.  Rights  of  descendants  to  the  family  name  used  in  business  by  an 

ancestor 153 

81.  Prefixes,  suffixes  and  first  names 159 

CHAPTER  VII 

Corporate  Names 

Section  82.  Effects  of  a  state  charter  on  names  of  corporations 163 

83.  Effect  of  incorporation  of  a  business  on  its  right  to  its  name 163 

84.  Foreign  and  domestic  corporations  —  rights  of,  as  to  name 165 

85.  Right  to  name  on  dissolution 166 

86.  Names  of  charitable  corporations 166 

87.  Incorporating  under  nickname  of  a  rival 169 

88.  Abbreviations  of  corporate  names 169 

89.  Affirmative  duty  to  differentiate  in  choosing  corporate  names. . .  .  171 

90.  Family  names  as  names  of  corporations 172 

91.  What  is  evidence  of  fraud  in  use  of  a  corporate  name 177 

92.  Rights  arising  out  of  priority  in  use  of  corporate  names 180 

93.  Use  of  term  "works,"  "company,"  etc.,  by  an  individual  or  part- 

nership    181 

94.  Outgoing  stockholders  and  employees 182 

95.  False  or  misleading  use  of  corporate  names 185 

96.  Names  of  unincorporated  societies,  clubs,  etc 186 

97.  Names  of  fraternal  societies 187 

98.  Similarity  of  corporate  names,  what  is 187 


xii  Contents 

CHAPTER  VIII 

Geographical  Names 

PAGE 

Section    99.  Rule  of  priority 200 

100.  One  of  several  who  use  a  common  geographic  name  may  sue  on 

behalf  of  aU 200 

101.  Secondary  meaning  or  association  between  the  name  and  the  lo- 

cality which  transforms  a  geographic  name  into  a  trade  name. .  203 

102.  Extent  of  public  knowledge  of  secondary  meaning 205 

103.  Duration  of  user  necessary  to  acquire  secondary  meaning 207 

104.  Degree  of  resemblance  necessary 208 

105.  Geographical  or  place  names  which  indicate  origin  and  source 

falsely 208 

106.  Residence  in  a  locality  does  not  give  unhmited  right  to  use  the 

name  of  the  locality  as  a  trade  name 211 

107.  Relative  location  of  plants  of  rivals  —  effect  on  names 212 

108.  Names  of  cities 213 

109.  Effect  of  moving  a  plant  or  business 216 

110.  Names  of  natural  products 217 

111.  Geographical  names  which  indicate  a  process  of  manufacture. . . .  219 

112.  Geographic  names  may  be  arbitrarily  adopted  as  trade  names. . .  223 

113.  Use  of  geographic  names  as  trade-marks  must  be  truthful 220 

114.  Geographical  names  which  indicate  quality  as  well  as  origin  or 

source 228 

115.  Secondary  meaning  of  semi-geographic  names 230 


CHAPTER  IX 

Dress  of  Merchandise 

Section  116.  Labels  which  are  not  strictly  trade-marks  are  protected 234 

117.  Degree  of  similarity  calculated  to  deceive 235 

118.  Mere  diversity  of  color,  not  a  controlling  feature 236 

119.  Imitation  of  a  single  feature,  such  as  color,  form,  etc 238 

120.  A  collocation  of  features,  which  singly  might  be  copied,  is  unfair  239 

121.  Resemblance  in  several  features  may  be  fair,  if  these  features  arc 

common  to  the  trade 242 

122.  Remarks  as  to  classi6cation  of  the  following  cases  of  simulation 

in  dress  or  general  get-up 244 

123.  Designs,  devices,  and  figures 245 

124.  Signatures  and  initials 246 

125.  Reading  matter  on  labels  or  circulars 247 

126.  MLsloading  use  of  a  label  proper  in  itself 248 

127.  Tobacco  tags,  and  cigar  bands,  etc 249 

128.  Wrappers,  cartons,  etc 250 

129.  Copying  bottles  used  by  competitor 251 

130.  RefilUng  containers  that  have  been  once  used 253 

131.  Substitution  by  selUng  of  inferior  goods  in  dress  of  goods  of  a 

higher  grade 256 

132.  Get-up  of  wagons,  buildings,  etc 257 


Contents  xiii 

PAGE 

Section  133    Labels 259 

(a)  Labels  not  registered  or  copyrighted  are  protected 260 

(b)  Features  of  an  action  as  to  label 260 

(c)  Kinds  of  labels 261 

(d)  Classification  of  label  cases 261 

I.  Simulation  of  labels  in  which  a  name  is  the  principal 

feature 261 

II.  Cases  involving  label  in  which  the  salient  feature  is 
a  device  or  catchword,  which  is  copied  or  simu- 
lated     263 

III.  Cases  in  which  there  is  no  salient  feature  but  the 

whole  get-up  including  the  name  is  unfair 264 

IV.  Cases  involving  a  general  resemblance  and  also  a 

likeness  in  the  name  used  in  which  relief  was 

denied 269 

V.  Cases  involving  no  similarity  in  name  but  a  re- 
semblance in  general  appearance  amounting  to 

unfair  competition 270 

VI.  Cases  not  involving  names,  in  which  the  general 

likeness  in  get-up  is  not  close  enough  to  be  unfair  273 

CHAPTER  X 
Simulation  of  Articles  Themselves 

Section  134.  Copying  of  features  essential  to  construction 276 

135.  Copying  distinguishing  features  as  a  whole 277 

136.  Copying  the  whole  article — making  a  facsimile 278 

137.  Copying  a  single  feature  or  part 284 

138.  Making  repair  parts  for  articles  manufactured  by  others 285 

139.  Copying  articles  on  which  patents  have  expired 288 

140.  Copying  the  color  of  goods 292 

CHAPTER  XI 

Trade  Secrets 

Section  141.  Property  in  trade  secrets 294 

142.  Protection  of  trade  secrets 296 

143.  Injunctions  against  breach  of  contract  by  disclosure  of  secrets.  .  .   297 

144.  Is  a  secret  a  monopoly? 298 

145.  Conditional  sale  of  goods  made  by  secret  formukc 299 

146.  Publication  of  a  secret,  what  constitutes 299 

147.  Disclosure  of  a  secret  in  court 301 

148.  Discovery  of  a  secret  by  lawful  means 302 

149.  Violation  of  contract  of  employment  by  betrayal  of  secrets 303 

150.  Employees  are  bound  by  implied  contract  not  to  disclose  secrets  306 

151.  Title  to  secrets  discovered  by  employee  as  a  part  of  his  work.  .  .  .   309 

152.  Unlawful  secrets 312 

153.  Danger  of  injury  to  plaintiff  by  defendant's  disclosures  must  exist  313 

154.  One  who  avails  himself  of  a  secret  fraudulently  disclosed  may  be 

enjoined  and  held  accountable  for  profits 314 


xiv  Contents 

PAGE 

Section  155.  Name  of  a  jobber  from  whom  goods  are  bought  may  be  a  trade 

secret 314 

166.  Transfer  of  secrets 315 

157.  List  of  customers  in  secret  property  —  no  one  may  canvass  them 

except  the  owner  of  the  hst 316 

168.  Pleadings  and  practice;  form  of  injunction 319 

169.  Defenses 320 

160.  Duty  of  corporate  officers  as  to  trade  secrets 320 

161.  Letters  may  be  trade  secrets 321 

CHAPTER  XII 
Interference  with  a  Competitor's  Business  and  Contracts 

Section  162.  Action  at  common  law  baaed  only  on  injury  to  one's  trade  or 

business 323 

163.  MaUce 329 

164.  Interference  with  business  generally 333 

165.  Interference  with  contracts  by  third  person  enjoined 336 

166.  Interference  with  contracts  with  servants 338 

167.  Lumley  v.  Gye,  and  later  cases 340 

168.  Causing  breach  of  contracts  for  furnishing  information 342 

169.  Causing   breach   of   passengers'    contracts   with   transportation 

companies 343 

170.  What  constitutes  interference  with  contract 344 

171.  Justification  of  interference  with  contracts 350 

172.  Ignorance  of  the  existence  of  the  contract  is  no  defense  against 

an  injunction 351 

172a.  Procuring  breach  of  contract  not  to  re-enter  business 351 

173.  Position  of  New  York  courts 352 

174.  Conditional  contracts  —  inducing  breach  of  manufacturers'  con- 

tracts with  retailers 355 

175.  Inducing  breach  of  contracts  for  sale  of  goods  made  by  secret 

process 357 

176.  Interference  with  proposed  or  prospective  contracts 361 

177.  What  interference  with  another's  business  in  general  is  legitimate  364 

178.  Tortious  interference  with  another's  business  generally 367 

179.  Interference  with  salesmen  of  a  competitor 368 

180.  Interference  by  false  representations  and  threats 368 

181.  Interference  by  bringing  a  multiplicity  of  suits 369 

182.  Stimulated  competition 369 

183.  Interference  with  employment,  actual  or  prospective 371 

184.  Damages 372 

CHAPTER  XIII 
Trade-Marks — General  Principles 

Section  185.  Marks,  trade-marks  and  trade  names 373 

186.  Definitions  of  a  trade-mark 375 

187.  Functions  of  a  trade-mark 376 

188.  Nature  of  a  trade-mark 377 


Contents  xv 

PAGE 

Section  189.  Essential  elements  of  a  technical  trade-mark 379 

190.  Non-essentials  of  a  trade-mark . 380 

191.  Features  of  the  dress  or  appearance  of  goods  cannot  ordinarily 

become  technical  trade-marks 380 

192.  Products  to  which  a  trade-mark  may  be  applied 381 

193.  Marks  indicating  the  selector  not  maker  of  goods 381 

194.  Several  trade-marks  for  the  same  goods 382 

195.  Must  be  affixed  to  goods 383 

196.  The  use  of  a  sign  or  word  as  a  trade-mark  must  not  be  against 

public  policy 384 

197.  Various  classifications  of  trade-marks 386 

198.  Distinction  between  trade-marks  and  trade  names 386 

199.  Difference  between   trade-marks  and   trade  names  not  one  of 

underlying  principle,  but  of  degree  and  method  of  proof 389 

CHAPTER  XIV 
What  May  be  Appropeiated  as  a  Trade-Mark 

Section  200.  The  general  principle 391 

201.  Descriptive  words  not  appropriable 392 

202.  Invented  or  fanciful  words 396 

203.  Common  words  used  in  an  arbitrary  sense 397 

204.  Words  indicating  quality,  superiority,  etc 398 

205.  Geographical  or  place  names 399 

206.  Personal  or  family  names 403 

207.  Names  of  patented  articles 404 

208.  Foreign  words 405 

209.  Letters  of  the  alphabet 406 

210.  Numerals 407 

CHAPTER  XV 
Acquisition  of  Technical  Trade-Marks 

Section  211.  Introductory 409 

212.  Who  may  acquire  a  trade-mark 409 

213.  Rights  of  foreigners 410 

214.  How  a  trade-mark  may  be  acquired 410 

215.  Adoption  of  a  trade-mark 411 

216.  Priority  of  use  against  priority  of  invention 412 

217.  Priority  and  exclusiveness  of  use 413 

''18.  Length,  extent  and  manner  of  use 414 

219.  Change  in  goods  to  which  trade-mark  is  applied 416 

220.  Territorial  extent  of  technical  trade-mark  rights 417 

221.  Trade-mark  protection  limited  to  goods  of  the  same  class 420 


xvi  Contents 

CHAPTER  XVI 

Registered  Trade-Marks  Under  the  U.  S.  Trade- 
Mark  Act 

PAGE 

Section  222.  Introductory 423 

223.  Advantages  of  registration 424 

224.  History  of  U.  S.  trade-mark  legislation;  constitutionality 426 

225.  Registration  by  owners 426 

226.  Declaration 429 

227.  Designation  of  agent  by  non-residents 431 

228.  Foreign  ai)plicants 431 

229.  Unregistrable  trade-marks 432 

230.  Who  may  oppose 448 

231.  Interference 451 

232.  Appeals  to  the  commissioner 453 

233.  Appeals  to  the  courts 454 

234.  Assignment  of  trade-mark 454 

235.  Certificates  of  registration 455 

236.  Period  of  protection 456 

237.  Cancellation  of  registration 456 

238.  Fees 457 

239.  Repayment  of  fees 458 

240.  Liability  for  infringement 458 

241.  Jurisdiction  of  the  courts 460 

242.  Appeals  to  the  United  States  supreme  court 461 

243.  Scope  of  court's  powers 462 

244.  Court  may  destroy  infringing  marks 462 

245.  Trade-marks  fraudulently  used 463 

246.  Cancellation  of  the  registration  of  a  trade-mark  by  a  court  in  an 

equity  suit 464 

247.  Effect  of  the  act  on  prior  rights 464 

248.  Pending  applications 465 

249.  Registration  fraudulently  procured 465 

250.  Rules  for  conducting  proceedings 465 

251.  Importation  of  articles  bearing  infringing  marks 466 

252.  Notice  of  registration 467 

253.  Definitions 468 

254.  When  act  takes  effect 468 

CHAPTER  XVII 
Disparagement  of  Rivals  and  Their  Goods 

Section  255.  English  procedure  statutes  as  related  to  injunction 471 

256.  Did  equity  have  jurisdiction  to  enjoin  Ubels  prior  to  the  act  of 

1873? 472 

257.  Summary  of  English  ca.ses 475 

258.  Importance  of  this  question  in  United  States 477 

259.  Difference  between  trade  libel  and  personal  libel 477 

260.  American  cases 479 

261.  The  case  of  Kidd  v.  Hornj 483 


Contents  xvii 

PAGE 

Section  262.  The  general  American  rule 485 

263.  Qualification  of  rule 486 

264.  Right  to  restrain  issuing  of  circulars  to  customers  —  case  of 

Emack  v.  Kane 488 

265.  Theory  that  threats  of  prosecution  must  be  shown  to  warrant  is- 

suance of  injunction 491 

266.  Intent  to  intimidate  customers,  not  to  fairly  warn  them,  is  a  neces- 

sary element  of  this  kind  of  proceeding  to  enjoin 493 

267.  Circulars  giving  notice  of  pendency  of  suit  for  unfair  competition 

are  legal 496 

268.  Trade  hbels  not  libelous  per  se 496 

269.  PreUminary  injunction  should  issue,  when  the  plaintiff's  right  is 

so  clear  as  to  be  practically,  or  is  actually  (as  by  demurrer) 
conceded 500 

270.  False  representations  regarding  a  competitor  which  are  not  libelous  501 

271.  Statutes  as  to  libels  do  not  oust  equity  of  jurisdiction 504 

CHAPTER  XVIII 

Unfair  Competition  in  the  Use  of  Literary  Property 

Section  272.  Copyright 509 

273.  Publication 510 

274.  Trade-mark  rights  arising  in  connection  with  hterary  property. .  512 

275.  Analogy  between  actions  for  unfair  competition  and  infringement 

of  copyright 513 

276.  The  doctrine  of  unfair  competition  as  applied  to  literary  property  514 

277.  Unfair  competition  in  connection  with  books  and  book  titles. . . .  517 

278.  Unfair  competition  in  connection  with  plays  and  play  titles 528 

279.  Names  of  newspapers  and  magazines 535 

280.  Comic  strips 541 

281.  Use  of  an  author's  name 543 

282.  Jurisdiction 545 

CHAPTER  XIX 
Miscellaneous  Forms  of  Unfair  Competition 

Section  283.  Confusing  uses  of  the  term  "Unfair  Competition"  by  the  courts.  547 

284.  Acts  contributory  to  unfair  acts 548 

285.  Disparagement  of  a  competitor  or  his  goods 550 

286.  Disparagement,  not  of  the  goods  of  a  specific  competitor,  but  of 

the  article  sold  by  a  number  of  competitors 550 

287.  Obstruction  of  a  competitor's  customers 550 

288.  Mis-use  of  term  "Sole  Proprietor" 551 

289.  Unfair  appropriation  and  use  of  a  competitor's  ideas  and  methods  552 

290.  Use  of  false  advertising 556 

291.  Advertising,  appropriation  of,  by  a  competitor 556 

292.  Solicitation  of  customers 558 

293.  Signs;  misuse  of  those  of  a  competitor 560 

294.  Bribery  as  a  means  of  competition 560 

295.  Injuring  a  rival  by  pretended  business  competition 560 


xviii  Contents 

PAGE 

Section  296.  Passing  off  the  Roods  of  a  third  party . .  561 

297.  Sale  of  inferior  goods,  or  Hoconds,  as  usual  quality 563 

298.  Use  of  prices  to  iiiBict  definite  injury  on  a  competitor 564 

299.  The  use  of  prices  for  advertising  purposes  or  as  a  decoy 565 

300.  Unfair  use  of  price  as  a  means  of  competition 567 

301.  Local  price  cutting 567 

302.  Where  the  use  of  cut  prices  accompanies  unfair  or  inaccurate 

description  of  goods 567 

303.  Competition  by  unfair  comparison  of  prices 568 

304.  Corporate  stock;  acquiring  for  purpose  of  unfair  competition.  .  .  .  668 

305.  Inducing  breach  of  contract  by  offers  to  save  harmless 568 

CHAPTER  XX 
Pleading 

Section  306.  Joinder  of  causes  of  action 570 

307.  Allegations  on  information  and  belief 571 

308.  Allegations  by  way  of  recital 571 

309.  Facts,  not  conclusions,  to  be  alleged 571 

310.  Certainty  and  particularity 572 

311.  Jurisdictional  facts 573 

312.  Answer 574 

313.  Essential  allegations 575 

314.  What  allegations  held  sufficient 575 

315.  What  allegations  held  insufficient 576 

316.  What  questions  may  be  raised  by  demurrer 576 

317.  As  to  pleading  the  defense  of  "unclean  hands" 577 

CHAPTER  XXI 
Evidence 

Section  318.  Intent  of  defendant 580 

319.  Difference  between  proof  of  cases  involving  a  fanciful  name,  or 

mark,  and  one  involving  secondary  meaning 581 

320.  Evidence  connected  with  comparison  of  names  or  marks  used  by 

the  parties  —  similarity 581 

321.  What  is  similarity? 581 

322.  Test  of  similarity  is  general  impression  made,  not  detailed  ex- 

amination    582 

323.  Similarity  does  not  mean  exact  likeness 584 

324.  Care  used  by  average  buyer  of  the  class  of  article  in  question  must 

be  considered 585 

325.  Character  of  the  article,  and  the  habits  and  intelligence  of  the 

consumer 586 

326.  Side  by  side  comparison  in  the  court  room  is  not  a  proper  final 

test  of  similarity 588 

327.  Evidence  that  the  proportion  of  buyers  of  any  article  likely  to  be 

deceived  by  defendant's  acts  is  small,  is  not  a  defense 590 

328.  Imitation  of  salient  features 590 

329.  Necessary  physical  requirements  of  the  article  must  be  considered  591 


Contents  xix 

PAGE 

Section  330.  Distance  between  competitors  a  factor  in  deciding  as  to  similarity  592 

331.  Deceit  of  ultimate  purchaser,  not  of  middleman,  is  the  important 

consideration 593 

332.  Similarity  of  color,  shape,  size,  etc 594 

333.  Similarity  of  names 595 

334.  Evidence  to  prove  secondary  meaning 596 

335.  Proof  of  instances  of  actual  bona  fide  deceit  of  purchasers 601 

336.  Burden  of  proof 602 

337.  Evidence  of  investigators  employed  by  plaintiff 603 

338.  Loss  of  business  by  complainant  as  evidence 604 

339.  Time  —  presumption  of  continuance 604 

340.  Judicial  notice 605 

341.  Weight  and  credibiUty  of  evidence 605 

342.  Discovery  and  examination  before  trial 605 

343.  Evidence  of  acts  of  employees 605 

344.  Evidence  of  registration,  effect  of 606 

345.  Evidence  as  to  use  of  a  trade-mark 606 

346.  Inferences  and  presumptions 607 

CHAPTER  XXII 
Intent  to  Defraud — Must  It  Be  Proved? 

Section  347.  Question  of  intent  is  a  plea  raised  by  defense 609 

348.  Division  of  cases  as  regards  intent 610 

349.  Cases  holding  that  intent  is  immaterial 611 

350.  Summary  of  English  rule  as  to  proof  of  intent 615 

351.  American  cases  as  to  necessity  of  proof  of  intent 615 

352.  First  user  of  a  mark,  rights  of,  arising  out  of  priority 620 

353.  Denial  of  intent  will  not  avail  defendant 622 

354.  The  action  for  unfair  competition  is  based  on  injury  to  the  plain- 

tiff, not  on  the  intent  of  the  defendant  to  injure  the  plaintiff.  .  .   623 

355.  Proof  of  specific  orders  to  his  agents  and  servants  to  act  fairly 

will  not  excuse  defendant 624 

356.  Actual  injury  to  plaintiff  by  defendant  must  be  imminent 624 

357.  Unimportant  facts  not  a  basis  of  presumption  of  intent  to  defraud  625 

358.  Fraudulent  intent  may  be  presumed 625 

359.  Presumption  of  fraud  may  arise  from  similarity  of  name  or  get-up  626 

360.  Presumption  of  fraud  arises  from  so  selling  goods  that  vendees 

may  pass  them  off  fraudulently 629 

361.  Presumption  may  be  based  on  manner  in  which  the  truth  is  told . .  631 

CHAPTER  XXIII 

Remedies 

Section  362.  Manufacturers'  responsibility  to  consumers  for  defective  goods. .  635 

363.  Jurisdiction  of  courts  in  unfair  competition  cases 636 

364.  Parties 637 

365.  Injunctions  before  any  act  committed  —  bills   in    the   nature   of 

quia  timet 639 


XX  Contents 

PAGE 

Section  366.  Preliminary  injunctions 641 

307.  Final  injunctions  —  Rcncral  considerations 648 

308.  The  court  docs  not  pass  upon  the  measures  adopted  by  the  de- 

fendant to  correct  his  unfair  acts 649 

309.  Decree  corrcctinf?  a  confusing  use  of  names  and  signs 651 

370.  Injunctions  against  use  of  color,  size,  form,  etc 652 

371.  Injunctions  against  use  of  family  name 653 

372.  Voluntary  discontinuance  of  infringing  acts  —  effect  of 654 

373.  Injunction  against  the  use  of  the  name  of  a  former  partner  or 

former  member  of  a  corporation 655 

CHAPTER  XXIV 
Defenses 

Section  374.  The  defense  that  the  plaintiff  and  defendant  are  not  in  competi- 
tion with  each  other 658 

375.  The  defense  that  the  name,  mark,  form,  shape,  or  other  device  in 

question  has  not  been  exclusively  used  by  complainant,  but  is  in 
common  use 659 

376.  The  defense  that  the  defendant's  article  is  as  good  as  the  plaintiff's  661 

377.  The  defense  that  the  defendant  has  no  intent  to  pass  off  his  goods 

as  plaintiff's  goods 662 

378.  The  defense  that  the  goods  were  not  marked  with  any  spurious 

marks  or  names 662 

379.  The  defense  that  defendant's  marks  differ  sufficiently  from  com- 

plainant's to  be  capable  of  registration  as  distinct  marks 603 

380.  The  defense  that  representations  objected  to  by  plaintiff  are  true  003 

381.  The  defense  that  the  deception  is  due  not  to  the  defendant,  but  to 

a  jobber  or  retailer  or  other  purchaser  from  the  defendant 004 

382.  The  defense  that  defendant  was  only  the  maker  of  the  label  or 

container  complained  of,  and  was  not  responsible  for  its  ulti- 
mate use  by  him  for  whom  it  was  made 007 

383.  The  defense  that  defendant  was  acting  only  as  agent  for  another, 

and  received  none  of  the  profits 007 

384.  The  defense  that  complainant's  title  was  not  properly  established  008 

385.  The  defense  that  the  offense  is  too  trivial  for  the  court  to  notice.  .   668 
380.  The  defense  that  plaintiff's  goods  are  worthless,  or  useless 669 

387.  The  defense  that  defendant's  name  is  two  or  more  words,  while 

plaintiff's  is  one  and  hence  different 669 

388.  The  defense  that  plaintiff  has  acted  unfairly  toward  third  persons 

not  connected  with  the  suit  at  bar 669 

389.  The  defense  that  plaintiff  is  an  impostor  and  deluding  the  public  669 

390.  The  misrepresentation  must  be  as  to  the  subject-matter  of  the  suit  670 

391.  The  defense  that  plaintiff  is  making  misrepresentations  in  his 

own  business 671 

392.  Misrepresentation  usually  but  not  always  an  affirmative  defense  672 

393.  Misrepresentations  by  plaintiff  discontinued  before  suing 673 

394.  Misrepresentations  must  be  intentional  and  material 674 

395.  Misrepresentations  as  to  ingredients,  and  the  nature  and  effect 

of  a  medical  preparation 675 


Contents  xxi 

PAGE 

Section  396.  Misrepresentations  must  be  as  to  ingredients  that  are  material .  .  680 

397.  Extravagant  claims  as  to  efficacy  of  medicines 680 

398.  Misrepreaentations  as  to  manufacture,   place   of   manufacture, 

origin  of  goods,  etc 681 

399.  Misrepresentation  as  to  maker  of  goods 684 

400.  Continuing  use  of  name  of  predecessor 685 

401.  Misrepresentation  as  to  unessential  details 686 

402.  Misrepresentations  implying  claim  of  monopoly  —  use  of  term 

"Patented" 687 

403.  Misrepresentation  by  use  of  the  term  "Copyrighted"  or  "Regis- 

tered"   690 

404.  Misrepresentation  by  laudatory  expressions  and  exaggerated  trade 

phrases 691 

405.  Miscellaneous  cases  of  misrepresentation  deemed  harmless 694 

406.  Claiming  falsely  to  be  a  corporation 694 

407.  Use  of  term  "estabhshed  in" 695 

408.  Abandonment 695 

409.  Kinds  of  laches 699 

410.  Laches,  in  the  sense  of  mere  delay 700 

411.  First  user  of  mark  may  revoke  license  imphed  from  laches 701 

412.  No  presumption  of  acquiescence  arises  from  an  exclusive  right .  .  .  703 

413.  Material  delay  bars  right  to  an  accounting  of  profits 703 

414.  Laches  may  bar  right  to  order  for  destruction  of  offending  goods  704 

415.  Laches  which  bars  right  to  preliminary  injunction 705 

416.  Acquiescence  in  the  sense  of  inaction  upon  which  others  have  the 

right  to  rely 706 

417.  Test  by  which  to  determine  acquiescence 708 

418.  Defense  that  plaintiff  violated  some  federal  statute  regarding  re- 

straint of  trade,  or  monopoly 710 

CHAPTER  XXV 

Profits  and  Damages 

Section  419.  Damages  recoverable  in  unfair  competition  cases 711 

420.  Confusion  as  to  right  to  profits  as  distinguished  from  damages.  .   712 

421.  Adequate  compensation  to  the  plaintiff  is  the  purpose  of  the  court 

in  granting  profits  and  damages 713 

422.  Damage  to  reputation  of  product  to  be  reckoned  as  well  as  loss 

of  profits 717 

423.  Deduction  of  defendant's  expenses  from  profits 718 

424.  When  an  account  will  not  be  ordered 720 

425.  Profits  given  to  plaintiff  may  be  limited  to  those  resulting  from 

defendant's  fraud 723 

426.  What  profits  may  be  recovered 724 

427.  Rules  for  determining  what  are  and  are  not  profits 729 

428.  When  laches  will  bar  an  accounting 732 

429.  Notice  of  infringement 733 

430.  Damages  in  suits  at  law  for  unfair  competition 734 

431.  Good  faith  as  an  excuse  for  relieving  defendant  from  paying 

damages 735 

Appendix.  United  States  Trade-Mark  Laws 737 


TABLE  OF  CASES 


A 

PAGE 

Accident  Ins.  Co.,  The,  Ltd.  V.  The  Accident,  Disease  and  General  Ins.  Corp., 

Ltd.,  51  L.  T.  Rep.  N.  S.  597-1884 180 

Actiengesellschaft,  V.  U.  F.  v.  Amberg,  109  Fed.  151-1901  (C.  C.  A.  31  Cir.).  .  698 

Adams,  Matter  of,  24  Misc.  (N.  Y.)  293-1898,  53  N.  Y.  Supp.  666 50 

Adriance,  Piatt  &  Co.  v.  National  Harrow  Co.,  121  Fed.  827-30-1903  (C.  C. 

A.  2d  Cir.),  58  C.  C.  A.  163,  49  L.  R.  A.  755 493,  495,  501 

Aiello  V.  Montecalfo.  21  R.  I.  496-1899 187 

Ainsworth  v.  Walmsley,  L.  R.  1  Eq.  518-1866 40,  611 

Alaska  Packers'  Assn.  v.  Admiralty  Trading  Co.,  43  App.  D.  C.  198 461 

Alaska  Packers'  Assn.  v.  Alaska  Improvement  Co.,  60  Fed.  103-1894   (C.  C. 

N.  D.  Cal.) 218,  681 

Albany  Perforated  Wrapping  Paper  Co.  v.  John  Hoberg  Co.,  102  Fed.  157- 

1900 382 

Albright  v.  Teas,  37  N.  J.  Eq.  171 309 

Alden,  Ex  parte,  131  O.  G.  2419 438 

Alden  v.  Gross,  25  Mo.  App.  123-1887 385,  676 

Alexander  Bros.  v.  Morse,  14  R.  I.  153-1884 95 

Alff  &  Co.  V.  Radam,  77  Tex.  530-1890,  14  S.  W.  164,  9  L.  R.  A.   145n.     See 

also  81  Tex.  122-1891,  16  S.  W.  990 15,  16,  396 

Alger  V.  Thatcher,  19  Pick.  51 309 

AUegretti  v.  Allegretti  Chocolate  Cream  Co.,  177  111.  129-1898,  52  N.  E.  .41,  184,  621 
AUegretti  Chocolate  Cream  Co.  v.  Keller,  85  Fed.  643-1898  (C.  C.  S.  D. 

N.  Y.) 643,  645 

Allegretti  Chocolate  Cream  Co.  v.  Rubel,  83  111.  App.  558-1898 485,  491 

Allen  V.  Flood,  App.  Cas.  1-1898. . .  .325,  326,  327,  329,  331,  338,  353,  355,  357 

Allen  V.  Walker  &  Gibson,  235  Fed.  230 393 

Allen  V.  Walton  Wood  &  Metal  Co.,  178  Fed.  287 572 

Allen  &  Wheeler  Co.  v.  Hanover  Star  MUling  Co.,  240  U.  S.  403-1916 30 

Allison  V.  Chandler,  11  Mich.  554 728 

Aluminum  Cooking  Utensil  Co.  v.  National  Aluminum  Works,  226  Fed . . .  815  394 

American  Brewing  Co.  v.  Bienville  Brewery,  153  Fed.  615 396 

American  Brewing  Co.  v.  St.  Louis  Brewing  Co.,  47  Mo.  App.  14-1891 664 

American  Chicle  Co.  v.  W.  J.  White  Chicle  Co.,  196  Fed.  977 248 

American  Circular  Loom  Co.,  In  re,  28  App.  D.  C.  450 436 

American  Clay  Mfg.  Co.  of  Pa.  v.  American  Clay  Mfg.  Co.  of  N.  J.,  198  Pa. 

St.  189-1901,  47  Atl.  936 164,  610 

American  Fibre  Chamois  Co.  v.  De  Lee,  67  Fed.  329 395 

American  Glue  Co.,  In  re,  27  App.  D.  C.  391 434 

American  Grocer  Publishing  Assn.  v.  The   Grocer   Pubhshing   Co.,  25  Hun 

(N.  Y.),  398-1881 98,  535 

American  Grocery  Co.  v.  Sloan,  68  Fed.  539 397 

American  Law  Book  Co.  v.  The   Edward  Thompson   Co.,  41  Misc.  (N.  Y.) 

396-1903,  84  N.  Y.  Supp.  225 335,  354 

xxiii 


xxiv  Table  of  Cases 

PAGE 

American  Lead  Pencil  Co.  v.  Gottlieb  &  Sons,  181  Fed.  178-1910,  C.  C.  S. 

D.  N.  Y 448,  606 

American  Malting  Co.  v.  Kcitcl,  209  Fed.  351  (CCA.) 337,  485,  486 

American  Order  of  Scottish  Clans  v.  Merrill,    151  Mass.  558,  8   L.    R.  A. 

320-1890,  24  N.  E.  918 172 

American  Solid  Leather  Button  Co.  v.  Anthony,  15  R.  L  338-1886,  5  Atl. 

626 104,  383,  408 

American  Specialty  Co.  v.  Collis  Co.,  235  Fed.  929 600 

American  Stay  Co.  v.  Dclaney,  211  Mass.  229-1912 311 

American   Stove  Co.   v.  Detroit  Stove   Works,  31    App.    Cas.    D.  C  304- 

1908 437,  605,  607 

American  Tin  Plate  Co.  v.  Licking  Roller  Mill  Co.,  158  Fed.  690-1902  (C 

C.  Ky.) 106,  406 

American  Tobacco  Co.  v.  Werckmeister,  146  Fed.  375,  aff'd  207  U.  S.  284 511 

American  Tobacco  Co.  v.  Polacsek,  170  Fed.  117-1909 394,  395,  421 

American  Waltham  Watch  Co.  v.  United  States  Watch  Co.,  173  Mass.  85- 

1899,  53  N.  E.  141,  43  L.  R.  A.  826 200,  620 

American  Washboard  Co.  v.  Saginaw  Mfg.  Co.,  103  Fed.  281-1900  (C  C  A. 

6th  Cir.),  50  L.  R.  A.  609 21,  22,  23,  24,  392,  412,  575,  601 

American  Wine  Co.  v.  Kohlman,  158  Fed.  830-1907  (C  C  Ala.) 172,  400 

Amoskeag  Mfg.  Co.  v.  Gamer,  55  Barb.  151 421 

Amoskeag  Mfg.  Co.  v.  Garner,  54  How.  Pr.  (N.  Y.)  297-1876 227,  703 

Amoskeag  Mfg.  Co.  v.  Spear,  2  Sandf.  (N.  Y.)  599-1849. . .  6,  235,  391,  395,  701,  702 

Angers  v.  Le  Prohon,  Rap.  Jud.  Quebec,  22  S.  C  170 523 

Angier  v.  Webber,  14  Allen  (Mass.),  211-1867,  92  Am.  Dec.  748 47,  52 

Angle  V.  Chicago,  St.  Paul,  etc.,  Ry.  Co.,  151  U.  S.  1-1893,  38  L.   ed.  55,  14 

Sup.  Ct.  240 327,  336,  338,  343,  347,  363 

Anglo-Swiss  Milk  Co.  v.  Metcalf,  3  R.  P.  C.  28 101 

Anheuser-Busch  Brew.  Assn.  v.  Clarke,  26  Fed.  410-1886  (C  C  Md.) 264 

Anheuser-Busch  Brewing  Assn.  v.  Fred  Miller  Brewing  Co.,  87  Fed.  864  (Cir. 

Ct.  E.  D.  Wis.  1898) 219 

Anheuser-Busch  Brewing  Assn.  v.  Piza,  24  Fed.  149-51-1885 215 

Anti-Cori-Zinc  Chemical  Co.,  In  re,  34  App.  D.  C  191 436 

ApoUinaris  Co.,  Ltd.,  v.  Scherer,  27  Fed.  18-1886  (C.  C  S.  D.  N.  Y.). . .  .356, 358, 

586 

Apollo  Bros.  V.  Perkins,  207  Fed.  530  (C.  C.  A.) 400,  401,  440 

Armington  &  Sims  v.  Palmer,  21  R.  L  109-1898,  42  Atl.  308,  43  L.  R.  A.  95. .    49 

Armstrong  v.  Kleinhans,  82  Ky.  303-1884,  56  Am.  Rep.  894 205 

Armstrong  Cork  Co.  et  al.  v.  Ring\valt,  235  Fed.  458 550 

Armstrong  v.  Savannah  Soap  Works,  53  Fed.  124-1892  (C  C  Ga.) 637 

Armstrong  Seatag  Corporation  v.  Smith's  Island  Oyster  Co.,  224  Fed.  100 

(C  C  A.,  2d  Cir.) 250 

Army  and  Navy  Co-operative  Society  v.  Army,  Navy  and  Civil  Service  Co- 
operative Society  of  South  Africa,  Ltd.,  19  R.  P.  C  574-76-1902 596 

Aronson  v.  Fleckenstein,  28  Fed.  75 529 

Artesian  Mfg.  Co.,  In  re,  37  App.  D.  C  113 438 

Asbestone  Co.  v.  Carey  Mfg.  Co.,  41  App.  D.  C.  507 450 

Ashley  v.  Dixon,  48  N.  Y.  430-1872 335,  352,  353 

Astor  V.  West  82d  St.  Realty  Co.,  167  App.  Div.  273 533 

Atkins  &  Co.,  In  re,  29  App.  D.  C  385 429,  454 

Atkins  Co.  v.  Moore,  212  U.  S.  285 454 


Table  of  Cases  xxv 

PAGE 

Atlantic  MiUing  Co.  v.  Rowland,  27  Fed.  24 716,  725 

Atlas  Mfg.  Co.  V.  Street  &  Smith,  204  Fed.  398-1913 428,  513,  515,  522 

Atlas  Underwear  Co.  v.  Cooper  Underwear  Co.,  210  Fed.  347 495 

Ault  &  W.  Co.  V.  Cheshire,  191  Fed.  741 393 

Automatic  Recording  Safe  Co.  v.  Bankers'  Registering  Safe  Co.,  224  Fed. .  .506,  394 

Avenarius  v.  Kornely,  139  Wis.  247-1909 397,  405,  410,  697 

Avery  &  Sons  v.  Meikle  &  Co.,  81  Ky.  73-84-1883 27,  107,  286 

Avery  &  Sons  v.  Meikle,  85  Ky.  435 716 

Ayer  v.  Hall,  3  Brewst.  (Pa.)  509-1871 41 

B 

Badische  Anilin  &  Soda  Fabrik  v.  Klipstein  &  Co.,  125  Fed.  543 581 

Baglin  v.  Cusenier  Co.,  141  Fed.  497-1905  (C.  C.  A.  2d  Cir.) 643 

Baglin,  A.  L.,  v.  The  Cusenier  Co.,  164  Fed.  25  (C.  C.  A.,  1908) 301 

Baglin  v.  Cusenier  Co.,  156  Fed.  1016;  see  same  case  221  U.  S.  580 402,  410, 

414,  440,  696 

Bailly  v.  Nashawannuck  Mfg.  Co.,  10  N.  Y.  Supp.  224 396 

Baker,  Walter,  &  Co.  v.  Baker,  77  Fed.  181-1896 126,  160,  401 

Baker,  Walter,  &  Co.  v.  Baker,  87  Fed.  209-1898  (C.  C.  S.  D.  N.  Y.) 649 

Baker,  Walter,  &  Co.  v.  Delapenha,  160  Fed.  746 410,  412,  414,  415 

Baker,  Walter,  &  Co.,  Ltd.,  v.  Gray,  192  Fed.  921 127,  562 

Baker  Co.,  Walter,  v.  Harrison,  32  App.  D.  C.  272 437 

Baker  v.  Sanders,  97  Fed.  948-1899  (C.  C.  E.  D.  Pa.) 127,  642 

Baker,  Walter,  &  Co.  v.  Sanders,  80  Fed.  889-1897;  (2d  Cir.),  26  C.  C.  A. 

220 126,  668 

Baker,  Walter,  &  Co.  v.  Slack,  130  Fed.  514-1904  (65  C.  C.  A.  138,  7th  Cir.) 

127,  136,  204,  632,  713,  716,  718,  725,  729,  731,  732 
Baker,  William  H.,  v.  Baker,  115  Fed.  297-1902  (53  C.  C.  A.  157,  2d  Cir.). . .  127,  131 

Baldwin  v.  Von  Micheroux,  5  Misc.  386,  83  Hun,  43 314,  316 

Ball,  Matter  of,  161  App.  Div.  (N.  Y.)  79 65 

Ball  V.  Best,  135  Fed.  434-1905  (C.  C.  N.  D.  111.) 140,  169,  188,  592 

Ball  V.  Broadway  Bazaar,  194  N.  Y.  429 386 

Ball  V.  Siegel,  116  111.  137-1886,  4  N.  E.  667 248,  621 

Ball  &  Socket  F.  Co.  v.  Cohn,  90  Fed.  664 571 

Baltimore  Car  Wheel  Co.  v.  Bemis,  29  Fed.  95-1886  (C.  C.  Mass.) 499 

Baltimore  Life  Insurance  Co.  v.  Gleisner,  202  Pa.  St.  386-88-1902,  51  Atl. 

1024 501 

Bamforth  v.  Douglass  P.  C.  &  M.  Co.,  158  Fed.  255 384 

Bank  of  Tomah  v.  Warren,  94  Wis.  151-1896,  68  N.  W.  549 32,  50 

Bankers'  H.  W.  Co.  v.  Beaver  S.  &  B.  M.  Co.,  236  Fed.  731 248 

Banks  v.  Gibson,  34  Beav.  566-1865 58 

Banghaf,  John  A.,  v.  Edward  C.  Chase,  150  Cal.  180-1907 283 

Barber  v.  Manico,  10  R.  P.  C.  93-1893 148 

Barker's  Trade-Mark,  iiJe,  53  L.  T.  N.  S.  23 101 

Barley  v.  Walford,  9  Q.  B.  197-1846 482 

Barnes  v.  Pierce,  104  Fed.  213-1908  (C.  C.  N.  Y.) 257,  397 

Barnett  v.  Leuchars,  34  L.  T.  (Ch.)  N.  S.  495-1865 257,  720 

Barrett  Mfg.  Co.,  In  re,  37  App.  D.  C.  Ill 435 

Barrett  Mfg.  Co.,  Re,  41  App.  D.  C.  513 435 

Bass,  Ratcliff  &  Gretton  Co.  v.  Feigenspan,  96  Fed.  206  (C.  C.  N.  Y.,  1899) .  .  421 


xxvi  Table  of  Cases 

PAQB 

Batcheller  v.  Thomson,  93  Fed.  660 405 

Bates  Mfg.  Co.  v.  The  Bates  Machine  Co.,  141  Fed.  213-1905 248 

Bates  Mfg.  Co.  v.  Bates  Numbering  Mach.  Co.,  172  Fed.  895-1909.  .3,  15,  22, 

80,  162,  171 

Battle  Creek  Sanitarium  Co.  v.  Fuller,  30  App.  D.  C.  411 450,  453 

Batty  V.  Hill,  1  Hem.  &  M.  264-1863 27 

Bauer,  A.,  &  Co.  v.  Order  of  Carthusian  Monks,  120  Fed.  78,  50  C.  C.  A. 

480-1903 98,  253 

Bauer,  A.  &  Co.  v.  Siegert,  120  Fed.  81 398,  402 

Bayer  v.  Baird,  15  R.  P.  C.  615 106 

Beadleston  &  Woerz  v.  Cooke  Brewing  Co.,  74  Fed.  229  (C.  C.  A.,  1896) .  .  379,  398 
Bear  Lithia  Springs  Co.  v.  Great  Bear  Spring  Co.,  71  N.  J.  Eq.  595.  .671,  673,  683 

Beard  v.  Turner,  13  L.  T.  N.  S.  747-1866 586,  708 

Beattie  v.  CaUanan,  82  App.  Div.  (N.  Y.)  7-1903,  81  N.  Y.  Supp.  413 335 

Beck  V.  Railway  Teamsters'  Protective  Union,  118  Mich.  497-1898 486 

H.  Becker  Co.  v.  C.  A.  Gambrill  Mfg.  Co.,  38  App.  D.  C.  535 440,  447,  452 

Beddow  v.  Beddow,  L.  R.  9  Ch.  Div.  89-1878 484 

Beecham  v.  Jacobs,  159  Fed.  129-1908  (C.  C.  A.  2d  Cir.) 687 

Beekman  v.  Marsters,  195  Mass.  205-1907,  80  N.  E.  817,  11  L.  R.  A.  N.  S. 

201 337,  347,  363 

Bell  V.  Locke,  8  Paige  (N.  Y.),  75-1840 536,  539 

Bender  v.  Bender  S.  &  O.  F.  Co.,  178  111.  App.  207-1913 172 

Bender  v.  Enterprise  Mfg.  Co.,  156  Fed.  641-1907  (C.  C.  A.  6th  Cir.) 285 

Benkert  v.  Fader,  34  Fed.  534-1888  (C.  C.  N.  D.  Cal.) 713,  716 

Benton  v.  Pratt,  2  Wend.  (N.  Y.)  385-1829 327,  338,  345,  346,  348 

Bergamini  v.  Bastian,  35  La.  Ann.  60-1883 52 

BergdoU  Brewing  Co.,  Louis,  v.  Bergdoll  Brewing  Co.,  218  Fed.  131 460,  574 

Berry  v.  Donovan,  188  Mass.  353-1905,  74  N.  E.  603,  5  L.  R.  A.  N.  S.  899.  .346,  487 

Betterman  v.  Louisville  &  N.  R.  R.  Co.,  207  U.  S.  205 553 

Bewlay  &  Co.,  Ltd.,  v.  Hughes,  15  R.  P.  C.  290-1898 213 

Bickmore  Gall  Cure  Co.  v.  Karns,  126  Fed.  573,  134  Fed.  833-1905  (C.  C.  A. 

3d  Cir.)  76,  267,  396,  630 

Bile  Bean  Mfg.  Co.  v.  Davidson,  22  R.  P.  C.  553-1905  (Ct.  Sess.) 679 

Bingham  School  v.  Gray,  122  N.  C.  699-1898,  41  L.  R.  A.  243,  30  S.  E.  304. .   158 
Birmingham  Small  Arms  Co.,  Ltd.,  v.  Webb  &  Co.,  24  R.  P.  C.  27-1906  (Ch. 

Div.) 103 

Birmingham  Vinegar  Brewery  Co.  v.  Powell,  66  L.  J.  Ch.  N.  S.  763-1897, 

A.  C.  710 221 

Bissell  Chilled  Plow  Works  v.  T.  M.  Bissell  Plow  Co.,  121  Fed.  357-1902 

(C.  C.  Mich.) 703,  705 

Bitterman  v.  Louisville  &  Nashville  R.  R.  Co.,  207  U.  S.  205-1907 .  336,  338,  343,  344 

Bixby  V.  Dunlap,  56  N.  11.  456-1876,  22  Am.  Rep.  475 327,  339 

Black  V.  Ehrich,  44  Fed.  793-1891  (C.  C.  S.  D.  N.  Y.) 513,  516,  525,  527 

Blackford  &  Wilan,  28  App.  D.  C.  535 452 

Blackwell  v.  Crabb,  36  L.  J.  Ch.  N.  S.  504-1867 590 

BlackweU  &  Co.  v.  Dibrell  &  Co.,  3  Hughes,  151-1878  (U.  S.  C.  C.  Va.)  Fed. 

Cas.  No.  1,  475-1878 213,  696,  698 

Blackwell  v.  Wright,  73  N.  C.  310-1875 616 

Blackwell's  Durham  Tobacco  Co.  v.  American  Tobacco  Co.  (N.  C),  59  S.  E. 

123-1907 166 

Blakely  v.  Sousa,  197  Pa.  St.  305-1900,  47  Atl.  286 38 


Table  of  Cases  xxvii 

FAGB 

Blanchard  v.  HiU,  2  Atk.  484-1742 5 

Blatz,  J.  P.,  Brew.  Co.  v.  Kaiserbrauerei,  Beck  &  Co.,  74  Fed.  222 398 

Block  V.  Standard  Distilling  &  Distributing  Co.,  95  Fed.  978-1899  (C.  C. 

Ohio) 571,  695 

Blofield  V.  Payne,  4  B.  &  Ad.  410-1833 6,  7,  661 

Blumenthal  v.  Bigbie,  30  App.  Cas.  (D.  C.)  118-1908 87 

Bluthenthal  &  Bickart  v.  Mohlmann,  49  Fla.  275-1905 577 

Board  of  Trade,  etc.,  v.  Christie  Grain  &  Stock  Co.,  198  U.  S.  236-1904,  49 

L.  ed.  1031,  25  Sup.  Ct.  637 300,  342,  553 

Board  of  Trade  v.  Hadden-Krull  Co.,  109  Fed.  705-1901  (C.  C.  Wis.) 342 

Board  of  Trade  v.  C.  B.  Thomson  Commission  Co.,  103  Fed.  902-1900  (C.  C. 

Wis.) 342 

Boardman  v.  Meriden  Britannia  Co.,  35  Conn.  402 408 

Bobbs-Merrill  Co.  v.  Straus,  147  Fed.  15-1906,  210  U.  S.  339-1907  (C.  C. 

A.  2d  Cir.) 348,  358,  361 

Boggs  V.  Duncan-Schell  F.  Co.,  163  Iowa,  106-1913,  143  N.  W.  483. .  .371,  556, 

560,  564 

Bohn  Mfg.  Co.  v.  Hollis,  54  Minn.  223,  55  N.  Y.  119,  21  L.  R.  A 365 

Bolander  v.  Peterson,  136  lU.  215-1891,  26  N.  E.  603,  11  L.  R.  A.  350.  ..  .406, 

597 

Bonnard  v.  Ferryman,  2  Ch.  269-1891 472 

Boosing  &  Dorman,  148  App.  Div.  (N.  Y.)  824 319 

Booth,  Alfred  W.,  &  Bro.  v.  Burgess  (N.  J.  Eq.  1906),  65  Atl.  226 335 

Booth,  A.,  &  Co.  V.  Davis,  127  Fed.  875-1904  (C.  C.  Mich.) 351 

Booth  V.  Jarrett,  52  How.  Pr.  169-1876  (N.  Y.  C.  P.  Sp.  T.) 45 

Borden's  Ice  Cream  Co.  v.  Borden's  Condensed  Milk  Co.,  201  Fed.  510  (C. 

C.  A.  1912) 403,  422,  601 

Borthwick  v.  Evening  Post,  37  Ch.  Div.  449-1888,  12  Encyc.  of  the  Laws  of 

England,  234,  235 26,  537 

Boston  Diatite  Co.  v.  Florence  Manufacturing  Co.,  114  Mass.  69-1873. .  .481,  482 
Bourlier  Brothers  v.  Macauley,  91  Ky.  135-1891,  15  S.  W.  60,  11  L.  R.  A. 

550 335,  342 

Bowen  v.  Hall,  L.  R.  6  Q.  B.  Div.  333-1881 338 

Boynton  v.  Shaw  Stocking  Co.,  146  Mass.  219-1888,  15  N.  E.  507 497 

Boysen  v.  Thorn,  98  Cal.  578-1893,  33  Pac.  492,  21  L.  R.  A.  233.. .  .335,  340,  342 

Bowen  v.  HaU,  L.  R.  6  Q.  B.  Div.  333-1881 333,  341 

Braadland,  Ltd.,  John,  In  re,  37  App.  D.  C.  602 437 

Bradford  v.  Belknap  Motor  Co.,  105  Fed.  63 721 

Bradley  v.  Norton,  33  Conn.  157 639 

Braham  v.  Beachim,  7  Ch.  Div.  848-1878 206 

Braham  v.  Bustard,  1  Hem.  &  M.  447-1863 82 

Brandreth  v.  Lance,  8  Paige  (N.  Y.),  24-1839;  Eden,  Injunction  (3d  ed.), 

372 479,  499 

Breitenbach  v.  Rosenberg,  37  App.  D.  C.  102 415,  431,  435 

Breitenbach,  M.  J.,  Co.  v.  Spangenberg,  131  Fed.  160-1904  (C.  C.  S.  D. 

N.  Y.) 90,  394,  576,  577 

Brennan  v.  Emery-Bird-Thayer  D.  G.  Co.,  108  Fed.  624  (C.  C.  A.) 396 

Briggs  V.  Natl.  Wafer  Co.,  102  N.  E.  Rep.  87-1913,  215  Mass.  100.  .74,  417,  729,  730 
British-American  Tobacco  Co.  v.  British-American  Cigar  Stores,  206  Fed. 

189 440,  575 

Bromund  Co.  v.  Columbia  Wax  Co.,  41  App.  D.  C.  506 436 


xxviii  Table  of  Cases 

PAGE 

Brooklyn  White  Lead  Co.  v.  Masury,  25  Barb.  (N.  Y.)  416-1857 225,  598 

Brooks  V.  Ingraham,  18G  Ala.  100,  05  So.  138-1914 306 

Brown  v.  Mercer,  37  N.  Y.  Super.  Ct.  205-1874 665 

Brown  v.  Seidel,  153  Pa.  St.  60-72-1893,  25  Atl.  1064 594 

Brown  Chemical  Co.  v.  Meyer,  139  U.  S.  540-1890,  35  L.  ed.  247,  11  Sup. 

Ct.  625 49,  117,  148,  160 

Brown  Chemical  Co.  v.  Frederick  Stearns  &  Co.,  37  Fed.  360-1889  (C.  C. 

E.  D.  Mich.) 600 

Brown-Forman  Co.  v.  Beech  Hill  Co.,  30  App.  D.  C.  485 435 

Brown,  J.  S.,  Hardware  Co.  v.  Ind.  Stove  Works,  96  Tex.  453-1903,  73  S.  W. 

800 340,  710 

Brown  Saddle  Co.  v.  Troxel,  98  Fed.  620 672,  710 

Brooke  &  Co.  v.  Commissioners  of  Inland  Revenue,  2  Q.  B.  356-1896 32 

Buck's  Stove  and  Range  Co.  v.  Kiechle,  76  Fed.  758-1896  (Cir.  Ct.  Ind.) ....  284 

Buchanan- Anderson  Co.  v.  Breen,  27  App.  Div.  573 436,  450 

Buckland  v.  Rice,  40  Ohio  St.  526-1884 384 

Buffalo  Rubber  Co.  v.  Batavia  Rubber  Co.,  90  Misc.  418 459 

Buffalo  Rubber  Mfg.  Co.  v.  Batavia  Rubber  Co.,  153  N.  Y.  Supp.  779 393 

Bulte  V.  Igleheart  Bros.,  137  Fed.  492  (C.  C.  A.) 576 

Bureau  of  Natural  Literature  v.  Sells,  211  Fed.  379 524 

Burgess  v.  Burgess,  3  De  G.  M.  &  G.  896-1853 81,  82,  121,  122,  124 

Burgess  v.  Burgess,  17  Eng.  Law  &  Equity,  257 133 

Burke  V.  Cassin,  45  Cal.  407,  480 403 

Burke,  Edward  &  John,  Ltd.,  v.  Bishop,  144  Fed.  838-1900  (C.  C.  A.  2d  Cir.) . .  706 

Burke,  Edward  &  John,  Ltd.,  v.  Bishop,  175  Fed.  167 696 

Burnett  v.  Chetwood,  2  Merivale,  441-1720,  note 473 

Burnett  v.  Phalon,  3  Keyes  (N.  Y.),  594-1867 98 

Burns,  C.  O.,  Co.  v.  Burns,  W.  F.,  Co.,  118  Fed.  944-1902  (C.  C.  S.  D.  N.  Y.) 

642,  706 

Burnstein  v.  Danwitz,  190  Fed.  604 460 

Burrell  v.  Simplex  Electric  Heating  Co.,  44  App.  D.  C.  452 452 

Burrow  v.  Marceau,  124  App.  Div.  (N.  Y.)  665-1908,  109  N.  Y.  Supp.  105 

16,  150,  176,  639 

Burt  V.  Tucker,  178  Mass.  493,  59  N.  E.  1111 696 

Burton  v.  Stratton,  12  Fed.  696-1882 42 

Bury  v.  Bedford,  4  De  G.  J.  &  S.  352-1864 44 

Busch  V.  Gross,  71  N.  J.  Eq.  508,  64  Atl.  754-1906 86 

Buzby  V.  Davis,  150  Fed.  275-1906  (C.  C.  A.  8th  Cir.) 231 

Buzby  v.  Keystone  Oil  &  Mfg.  Co.,  206  Fed.  136 397 

C 

Cady  V.  Schultz,  19  R.  I.  193-1895,  32  Atl.  915,  29  L.  R.  A.  524 Ill,  592 

CaffarelH  Bros.  v.  Western  Grocer  Co.,  102  Tex.  104,  127  S.  W.  1018 693 

Cahn  V.  Gottschalk,  14  Daly  (N.  Y.),  542-1888,  2  N.  Y.  Supp.  13.  . .  .95,  680,  690, 

-,      703,  732 

Cahn  V.  Hoffman  House,  28  N.  Y.  Supp.  388 402 

Cahn,  Belt  &  Co.,  In  re,  27  App.  D.  C.  173 434,  443 

California  Fig  Syrup  Co.  v.  Improved  Fig  Syrup  Co.,  51  Fed.  296 578,  638 

California  Fig  Syrup  Co.  v.  Putnam,  66  Fed.  750-1895  (C.  C.  Ma.ss.) 676 

California  Fig  Syrup  Co.  v.  Stearns  &  Co.,  73  Fed.  812-1896  (C.  C.  A.  6th 

Cir.),  33  L.  R.  A.  56 676 


Table  of  Cases  xxix 

PAGE 

California  Fruit  Canners'  Assn.  v.  Myer,  104  Fed.  82  (Cir.  Ct.  Md.  1899) ....   203 

Callaghan  v.  Myers,  128  U.  S.  617 721,  726 

Calliga  V.  Interocean  Newspaper  Co.,  157  Fed.  186,  aff'd  215  U.  S.  182 510 

Camors  v.  McConneU,  140  Fed.  412 672,  710 

Campbell  v.  Cooper,  34  N.  H.  49 342 

Canal  Co.  v.  Clark,  13  Wall.  311-1871,  80  U.  S.  311,  20  L.  ed.  581.  .  .22,  28,  216, 

379,  388,  391,  664 

Candee,  L.,  &  Co.  v.  B.  F.  Goodrich  Co.,  44  App.  D.  C.  53 454 

Candee,  Swan  &  Co.  v.  Deere  &  Co.,  54  111.  439-61-1870 287,  382,  400,  412 

Cantrell  &  Cochrane  v.  Wittemann,  109  Fed.  82-1901  (C.  C.  S.  D.  N.  Y.) .  .641,  642 

Capewell  Horse  Nail  Co.  v.  Green,  182  Fed.  404,  aff'd.  188  Fed.  20 384 

Capewell  Horse  Nail  Co.  v.  Mooney,  167  Fed.  575,  aff'd.  172  Fed.  826,  97  C. 

C.  A.  248 382,  383,  384,  389 

CapeweU  Horse  Nail  Co.  v.  Putnam  Nail  Co.,  140  Fed.  670 412 

Carew  v.  Rutherford,  lOG  Mass.  1 487 

Carmel  Wine  Co.  v.  California  Winery,  38  App.  D.  C.  1 435,  452 

Carmel  Wine  Co.  v.  Palestine  Hebrew  Wine  Co.,  161  Fed.  654-1908 402,  643 

Carson  v.  Ury,  39  Fed.  777-1889  (CCA.) 550 

Carrington  v.  Taylor,  11  East,  571 325 

Carroll  v.  Duluth  Superior  Milling  Co.,  232  Fed.  675 603 

Carroll  v.  Ertheiler,  1  Fed.  688  (C  C  E.  D.  Pa.,  1880) 421,  605 

Carroll  &  Son  Co.,  Thomas  G.,  v.  Mcllvaine  &  Baldwin,  171  Fed.  129,  aff'd 

183  Fed.  22  (C  C  A.,  2nd  Cir.) 388,  418,  424,  700 

Carter  Medicine  Co.  v.  Barclay,  36  App.  D.  C  123 449 

Cartier  v.  Carlile,  31  Beav.  292-1862 612 

Casey  v.  Cincinnati  Typographical  Union,  45  Fed.  135-1891  (C.  C  Ohio),  12 

L.  R.  A.  193,  note 491 

Ca.sh  V.  Cash,  19  R.  P.  C  181-1902,  86  L.  T.  211 138,  141 

Castroville  Co-op.  Creamery  Co.  v.  Coe,  92  Pac.  648,  6  Cal.  App.  533-1907.  .   669 

Caswell  V.  Hazard,  121  N.  Y.  484-1890,  24  N.  E.  707 147 

CeUular  Clothing  Co.,  Ltd.,  v.  Maxton  &  Murray,  App.  Cas.  326-1899,  16 

R.  P.  C  307 70,  599,  614 

CeUuloid  Mfg.  Co.  v.  Cellonite  Mfg.  Co.,  32  Fed.  94-1887  (C  C  D.  N.  J.) 

98,  108,  198 40,  50,  98,  162,  182,  397,  582 

Celluloid  Mfg.  Co.  v.  Read,  47  Fed.  712 397 

Centaur  Co.  v.  Heinsfurter,  84  Fed.  955 404 

Centaur  Co.  v.  KiUenberger,  87  Fed.  725-1898  (C  C  N.  J.) 251,  289 

Centaur  Co.  v.  Link,  62  N.  J.  Eq.  147-1901,  49  Atl.  828 266,  290 

Centaur  Co.  v.  MarshaU,  97  Fed.  785-1899,  38  C  C  A.  413 625,  642 

Central  Consumers  Co.,  In  re,  32  App.  D.  C  523 439 

Central  Transportation  Co.  v.  Pullman  Palace  Car  Co.,  139  U.  S.  24-53-1890, 

35  L.  ed.  55,  11  Sup.  Ct.  478 298 

Chadron  Opera  House  Co.  v.  Loomer,  71  Neb.  785,  99  N.  W.  649-1904 86 

Chadwick  v.  Covell,  151  Mass.  190,  23  N.  E.  1068,  6  L.  R.  A.  839,  21  Am.  St. 

Rep.  442 64,  296,  303 

Chambers  &  MarshaU  v.  Baldwin,  91  Ky.  121-1891,  15  S.  W.  57,  11  L.  R.  A. 

545 335,  342,  354 

Chancellor,  etc..  University  of  Oxford  v.  Wilmore-Andrews  Pub.  Co.,  101  Fed. 

443-1900  (C  Ct.  S.  D.  N.  Y.) 222,  517 

Chapin-Sacks  Mfg.  Co.  v.  Hendler  Creamery  Co.,  231  Fed.  550 393 

Chasemore  v.  Richards,  7  H.  L.  C  349-1859 329 


XXX  Table  of  Cases 

PAGE 

Cheavin  v.  Walker,  5  Ch.  Div.  850-1877  (Ch.  App.) 688 

Chesterman  v.  Seeley,  18  Pa.  Co.  Ct.  031-1896,  5  Pa.  Dist.  757 50 

Chicago  Pneumatic  Tool  Co.  v.  Phila.  Pneumatic  Tool  Co.,  118  Fed.  852  (C.  C. 

S.  D.  N.  Y.  1902) 581,  604 

Chickering  v.  Chickering  &  Sons,  215  Fed.  490  (C.  C.  A.  7th  Ct.  1914)  ....  134,  157 
Chickering  v.  Chickering  &  Sons,  120  Fed.  69-1903  (C.  C.  A.  7th  Cir.)  198  Fed. 

958 157,  660 

Chipley  v.  Atkinson,  23  Fla.  206-1887,  1  So.  934 339,  340,  353,  354 

Chi.s.sum  v.  Dewes,  5  Russ.  29 32 

Chittenden  v.  Witbeck,  50  Mich,  401-20-1883,  15  N.  W.  526 34 

Choynski  v.  Cohen,  39  Cal.  501-1870 596 

Church  &  Dwight  Co.  v.  Russ,  99  Fed.  270-78-1900  (C.  C.  Ind.) 5,  421 

Church  V.  Kresner,  26  App.  Div.  (N.  Y.)  349-1898,  49  N.  Y.  Supp.  742 147 

Churton  v.  Douglas,  28  L.  J.  N.  S.  Ch.  841-1859 34,  52 

Cincinnati  Co.  v.  Dodds,  19  Wkly.  L.  Bui.  Ohio,  84 310 

Cincinnati  U.  S.  Co.  v.  Cincinnati  Shoe  Co.,  7  Ohio  N.  P.  135 649 

Citizens  Co.  v.  Montgomery,  etc.,  Co.,  171  Fed.  561 324,  329,  349,  485,  569 

City  of  Carlsbad  v.  Kutnow,  71  Fed.  167-1895  (C.  C.  A.  2d  Cir.),  35  U.  S.  App. 

750,  18  C.  C.  A.  24 207 

City  of  Carlsbad  v.  Kutnow,  68  Fed.  794-1895,  affirmed  35  U.  S.  App.  750- 

1895,  71  Fed.  167 210 

City  of  Carlsbad  v.  Tibbetts,  51  Fed.  852-56 202 

City  of  Findley  v.  Pertz,  66  Fed.  427 560 

Civil  Service  Supply  Association  v.  Dean,  L.  R.  13  Ch.  Div.  512-1879 595 

Clark  V.  JEtna  Iron  Works,  44  111.  App.  510-1892 182 

Clark  V.  Clark,  25  Barb.  (N.  Y.)  76-1857 262,  644 

Clark  V.  Freeman,  11  Beav.  112-1848 473,  480 

Clark  Thread  Co.  v.  Armitage,  67  Fed.  896-1895  (C.  C.  S.  D.  N.  Y.,  1895), 

affirmed  and  modified  74  Fed.  896-1895 76,  152,  692,  695 

Clark  Thread  Co.  v.  Armitage,  74  Fed.  936-1896  (C.  C.  A.  2d  Cir.) 76,  686 

Clark  Thread  Co.  v.  Clark,  55  N.  J.  Eq.  658-1897;  37  Atl.  59 654 

Clay  v.  Kline,  149  Fed.  912-1906  (C.  C.  S.  D.  N.  Y.) 250 

Clayton  v.  Day,  26  Sol.  Jour.  43-1881 82 

Clemens  v.  Belford,  Clark  &  Co.,  14  Fed.  728 543,  544 

Clement  v.  Maddick,  5  Jur.  N.  S.  592-1859 98,  536 

Cleveland  Foundry  Co.  v.  Silver,  134  Fed.  591 236 

Cleveland  Stone  Co.  v.  Wallace,  52  Fed.  431-1892  (C.  C.  Mich.) 401,  692 

Clip  Bar  Mfg.  Co.  v.  Steel  P.  P.  Co.,  209  Fed.  874  (aff'd  213  Fed.  233,  C.  C.  A. 

3d  Cir.) 496 

Clotworthy  v.  Schepp,  42  Fed.  62-1890  (C.  C.  S.  D.  N.  Y.) 676,  678 

Coal  Co.  v.  Spangler,  54  N.  J.  Eq.  354,  34  Atl.  932 55 

Coats  V.  Holbrook,  2  Sandf.  Ch.  (N.  Y.)  586-1845 218,  256,  725 

Coats,  J.  &  P.,  Ltd.,  V.  John  Coates  Threafl  Co.,  135  Fed.  177-79-1905 177 

Coats  V.  Merrick  Thread  Co.,  149  U.  S.  562-1892,  at  p.  566,  37  L.  ed.  847,  13 

Sup.  Ct.  966 13,  227,  244 

Coca-Cola  Co.  v.  American  Druggists  Syndicate,  200  Fed.  107 394,  448 

Coca-Cola  Co.  v.  Deacon  Brown  Co.,  200  Fed.  105 448,  710 

Coca-Cola  Co.  v.  Gay-Ola  Co.,  200  Fed.  720-1912  (C.  C.  A.  6th  Cir.) .  .278,  293,  672 
Coca-Cola  Co.  v.  Gay-Ola  Co.,  200  Fed.  720,  119C.  C.  A.  104,  211  Fed.  942.051,  653, 

710 
Coca-Cola  Co.  v.  Glee-No!  Bottling  Co.,  221  Fed.  61  (C.  C.  A.  5th  Cir.) 242 


Table  of  Cases  xxxi 

PAGE 

Coca-Cola  Co.  v.  Koke  Company  of  America,  6  Trade-Mark  Rep.  349 394 

Coca-Cola  Co.  v.  Nashville  Syrup  Co.,  215  Fed.  527 394,  732 

Coca-Cola  Co.  v.  Nashville  Syrup  Co.,  200  Fed.  153 394,  444,  448 

Cochrane  v.  McNish  &  Son,  App.  Cas.  225-1896 82,  92,  93,  689 

Coeur  D'Alene  Mining  Co.  v.  Miners'  Union,  51  Fed.  260 492 

Coffeen  v.  Brunton,  5  McLean,  256-1851,  Fed.  Cas.  No.  2947,  4  McLean, 

516-1849,  Fed.  Cas.  No.  2946,  5  Fed.  Cas.  1184-1185 270,  616,  648 

Cohen  v.  Nagle,  190  Mass.  4-1906,  76  N.  E.  276,  2  L.  R.  A.  964,  190  Mass.  4- 

1893,  76  N.  E.  276 231,  389,  413,  414,  649 

Cole,  G.  W.,  Co.  V.  American  Cement  Co.,  130  Fed.  703-1904  (C.  C.  A.  7th 

Cir.)  4 21,  376,  387 

Cole,  H.  C,  &  Co.  v.  Wm.  Lea  &  Sons  Co.,  35  App.  D.  C.  355 606 

Colgate  v.  Adams,  88  Fed.  899-1898  (C.  C.  N.  D.  111.) 227 

CoUard  v.  Marshall,  1  Ch.  571-1892,  577 475 

Collier  v.  Jones,  66  Misc.  97 518 

Collins  Co.  v.  Brown,  3  K.  &  J.  423 390 

CoUins  Company  v.  Oliver  Ames  &  Sons  Corporation,  18  Fed.  561-1882  (C.  C. 

S.  D.  N.  Y.) 108,  421,  422 

Colman  v.  Crump,  70  N.  Y.  573-1877 245,  585,  613,  620 

Colton  V.  Thomas,  2  Brewst.  (Pa.)  308-1869,  7  Phila.  257  (Com.  Pleas,  Phila.)     87, 

112 
Columbia  Mill  Co.  v.  Alcorn,  150  U.  S.  460-463-1893,  37  L.  ed.  1144,  14  Sup.  Ct. 

141 173,  377,  400,  412,  533 

Commercial  Acetylene  Co.  v.  Avery  Portable  L.  Co.,  152  Fed.  642-1906  (C.  C. 

Wis.) 369,  491 

Commercial  Advertiser  Assn.  v.  Haynes,  26  App.  Div.  (N.  Y.)  279-1898,  49  N. 

Y.  Supp.  938 98,  536 

Commissioners  of  Inland  Revenue  v.  Angus  &  Co.,  23  Q.  B.  D.  579-1889. ...     32 

Commonwealth  v.  Banks,  198  Pa.  St.  397-1901,  48  Atl.  277 599 

Commonwealth  v.  Kentucky  Distilleries  &  Warehouse  Co.,  132  Ky.  521-1909.    378 

Compania  General  de  Tabacos  v.  Rehder,  5  R.  P.  C.  61-1887  (Ch.  Div.) 211 

Computing  Scale  Co.  v.  Standard  Computing  Scale  Co.,  118  Fed.  965-1902, 

55  C.  C.  A.  459 68,  98,  392,  399 

Condy  &  Mitchell  v.  Taylor  &  Co.,  56  L.  T.  N.  S.  891-1887  (Ch.  Div.) 254 

Congress  and  Empire  Spring  Co.  v.  High  Rock  Congress  Spring  Co.,  45  N.  Y. 

291-1871 218,  397 

Connell  v.  Reed,  128  Mass.  477-1880 385,  400,  676,  682 

Connors  Paint  Co.,  27  App.  D.  C,  Re,  389 434 

Conrad  v.  Uhrig  Brewing  Co.,  8  Mo.  App.  277-1880 262,  680 

Consolidated  Ice  Co.  v.  Hygeia  Distilled  Water  Co.,  151  Fed.  10-1907  (C.  C.  A. 

3d  Cir.) 394 

Consumers'  Co.  v.  Hydrox  Chemical  Co.,  40  App.  D.  C.  284-1913 429,  436 

Continental  Ins.  Co.  v.  Continental  Fire  Assn.,  41  C.  C.  A.  326,  101  Fed.  255.  .  230 
Continental  Tobacco  Co.  v.  Larus  &  Brothers  Co.,  133  Fed.  727-1904  (C.  C.  A. 

4th  Cir.) 273 

Cook  V.  CoUingridge,  Jacob,  607-1825 52 

Cook  &  Bernheimer  Co.  v.  Ross,  73  Fed.  203-1896  (C.  C.  S.  D.  N.  Y.)..  .  .238,  251 

Cook  v.  Starkweather,  13  Ab.  Pr.  N.  S.  (N.  Y.)  392 407 

Cooke  &  Cobb  Co.  v.  Miller,  169  N.  Y.  475-1902,  62  N.  E.  582 287 

Cooper  &  McLeod  v.  Maclachlan,  19  R.  P.  C.  27-1901 596 

Corbett  v.  Purdy,  80  Fed.  901 510,  528 


xxxii  Table  of  Cases 

PAGE 

Cornwall,  Re,  12  Pat.  Off.  Gaz.  312-1877 227 

CottreU  V.  Babcock  Printing  Press  Mfg.  Co.,  54  Conn.  122,  6  Atl.  791-1886.  .52,  53, 

317 

Coulson  &  Sons  v.  Coulson  &  Co.,  3  Times  L.  R.  84G-1887 500 

County  Chemical  Co.  v.  Frankenburg,  21  R.  P.  C.  722-1904 272,  704 

Covell  V.  Chadwick,  153  Mass.  2G3-1891,  26  N.  E.  850 315 

Covert  V.  Bcrnat,  156  Mo.  App.  087 383 

Crawshay  v.  Collins,  15  Ves.  218-1808 60 

Crawshay  v.  Thompson,  4  Man.  &  Gr.  3.57-1842 6,  7,  8 

Crescent  Typewriter  Supply  Co.,  Re,  30  App.  Cas.  (D.  C.)  324-1908  230,  400,  440 

Croft  V.  Day,  7  Bcav.  84-1843 6,  8,  82,  88,  109,  114,  117,  148 

Croft  V.  Richardson,  59  How.  Pr.  356-1880 483 

Cropper  v.  Cropper,  23  R.  P.  C.  388-1906 638 

Grossman  v.  Griggs,  186  Mass.  275-1904,  71  N.  E.  560 44 

Cruttwell  V.  Lye,  17  Ves.  335-1810 32,  33,  52 

Crystaleid  Water  Co.  v.  Schultz,  77  Misc.  26,  135  N.  Y.  Supp.  273-1912 252 

Cuervo  v.  Landauer,  63  Fed.  1003-1894  (C.  C.  S.  D.  N.  Y.) 623 

Cumberland  Glass  Mfg.  Co.  v.  De  Witt,  120  Md.  381-1913 348,  350 

Cutter  V.  Gudebrod  Bros.  Co.,  190  N.  Y.  252-1907,  83  N.  E.  16. . .  .719,  721,  729 

D 

Dadirrian  &  Sons,  Co.,  Dr.  v.  Hauenstein,  37  Misc.  23 464,  697 

Dadirrian  v.  Yacubian,  98  Fed.  872 406,  692 

Dale  V.  Smithson,  121  Abb.  Pr.  (N.  Y.)  237-1861 385,  694 

Daly  V.  Cornwell,  34  App.  Div.  (N.  Y.)  27-1898,  54  N.  Y.  Supp.  107 353 

Daly  V.  Palmer,  6  Blatchf.  256,  Fed.  Cas.  No.  3,552 535 

Daughters  of  Isabella  v.  National  Order,  83  Conn.  679,  78  Atl.  333,  Anno.  Case, 

1912,  822 187 

Davids,  Thaddeus,  Co.  v.  Davids,  190  Fed.  285,  (Southern  Dist.  N.  Y.) 389 

Davids,  Thaddeus,  Co.  v.  Davids,  233  U.  S.  461.. 403,  404,  434,  438,  440,  442, 

443,  444,  446,  448,  459 

Davids  Co.,  Thaddeus,  v.  Davids,  178  Fed.  801 434,  442 

Davies  v.  Racer,  72  Hun,  43 305 

Davis  v.  Kendall,  2  R.  I.  566-1850 612,  616 

Davis  V.  New  England  Ry.  Pub.  Co.,  203  Mass.  470-1909 367,  486,  503 

Davis  V.  Stribolt,  59  L.  T.  N.  S.  854 406 

Day  V.  Brownrigg.  L.  R.  10  Ch.  Div.  294-1878 45,  475 

Day  V.  Hunnicutt,  160  S.  W.  134-1913 349,  372 

Day  V.  Webster,  23  App.  Div.  (N.  Y.)  601-1897,  49  N.  Y.  Supp.  314  517,  609,  619 
De  Bevoise,  Charles  R.,  &  Co.  v.  H.  &  W.  Co.,  69  N.  J.  Eq.  114-1905  (Pitney, 

V.  C.) 100,  406 

Deitsch  v.  Gibson,  198  Fed.  410 398 

Deitsch  v.  Gibson,  155  Fed.  383-1907  (C.  C.  N.  Y.) 699 

Deitsch  Bros.  v.  Loonen,  39  App.  D.  C.  11 432 

De  Feranti  v.  Lyndmark,  30  App.  D.  C.  417 449 

De  Jong  v.  Behrman  Co.,  148  A.  D.  37 353 

De  Libellis  Famosis,  5  Coke,  125a 476 

De  Long  v.  De  Long  Hook  and  Eye  Co.,  89  Hun,  399-1895,  35  N.  Y.  Supp. 

509 143,  172,  176 

De  Long  Hook  &  Eye  Co.  v.  American  Pin  Co.,  200  Fed.  66 405 


Table  of  Cases  xxxiii 

PAGE 

De  Long  Hook  and  Eye  Co.  v.  Excelsior  Hook  and  Eye  and  Fastener  Co.,  139 

Fed.  146-1905  (C.  C.  W.  D.  N.  Y.);  on  appeal,  144  Fed.  682 274 

De  Nobili  v.  Scanda,  198  Fed.  341 410,  428,  434,  683 

De  Youngs  v.  Jung,  7  Misc.  (N.  Y.)  56-1894,  27  N.  Y.  Supp.  370 112 

Deering  Harvester  Co.  v.  Whitman  &  Barnes  Co.,  91  Fed.  376-1898 107,  287 

D.,  L.  &  W.  R.  Co.  V.  Frank,  110  Fed.  689-1901  (C.  C.  W.  D.  N.  Y.) 344 

Delaware  &  H.  Canal  Co.  v.  Clark,  13  Wall.  (80  U.  S.)  311,  322 513 

Delz  V.  Winfree,  80  Tex.  400-1891 365 

Deming  v.  Chapman,  11  How.  Pr.  382-1854 301 

Dennehy  &  Co.  v.  Robertson  Co.,  32  App.  D.  C.  355 439 

Dennison  Mfg.  Co.  v.  Scharf  Tag,  Label  and  Box  Co.,  135  Fed.  625-1905  (C.  C. 

A.  6th  Cir.) 107,  407 

Dennison  Mfg.  Co.  v.  Thomas  Mfg.  Co.,  94  Fed.  651-1899  (C.  C.  Del.).  .3,  13,  380, 

402,  441 

Derringer  v.  Plate,  29  Cal.  296-1865,  87  Am.  Dec.  170 73,  417 

Devlin  v.  Devlin,  69  N.  Y.  212-1877 147 

Devlin  v.  McLeod,  135  Fed.  164-1904  (C.  C.  W.  D.  N.  Y.) 264,  267,  392 

De  Voe  Snuff  Co.  v.  Wolff,  206  Fed.  420  (C.  C.  A.) 397,  585 

Diamond  Co.  v.  U.  S.  Co.,  N.  Y.  L.  J.,  Apr.  23,  1917,  by  N.  Y.  App.  Div 281 

Diamond  Match  Co.  v.  Saginaw  Match  Co.,  142  Fed.  727-1906  (C.  C.  A.  6th 

Cir.) 292 

Diamond  Match  Co.  v.  Safe  Harbor  Metal  Co.,  109  Fed.  154 642 

Dick,  A.  B.,  Co.  v.  Henry,  149  Fed.  424  (C.  C.  S.  D.  N.  Y.,  1907) 604 

Dick  V.  Northern  Pacific  R.  Co.,  86  Wash.  211-1915 372 

Dickey,  Paul,  v.  Mutual  Film  Corporation,  160  N.  Y.  Supp.  609-1916,  6  Trade- 
Mark  Rep.  423 533 

Dicks  v.  Yates,  18  Ch.  Div.  76,  87-1881 515 

Diederich  v.  W.  Schneider  Wholesale  W.  &  L.  Co.,  195  Fed.  35  (C.  C.  A.  8th  Cir., 

1912) 383,  429,  459 

Dixie  Cotton  Felt  Mattress  Co.  v.  Stearns  &  Foster  Co.,  185  Fed.  431 383 

Dixon  v.  Holden,  L.  R.  7  Eq.  488-1869 473,  474,  481,  483,  484,  485 

Dixon  Crucible  Co.  v.  Guggenheim,  2  Brewst.  (Pa.)  321-1869 40,  219,  682 

Doan  V.  American  Book  Co.,  105  Fed.  772 524 

Dockrell  v.  Dougall,  80  L.  T.  Rep.  556-1899 505 

Doctor  Miles  Medical  Co.  v.  Jaynes  Drug  Co.,  149  Fed.  838-1906  (C.  C.  Mass.)  573 

Doctor  Miles  Medical  Co.  v.  Park  &  Sons  Co.,  220  U.  S.  373 348 

Doctor  Miles  Medical  Co.  v.  Piatt,  142  Fed.  606-1906  (C.  C.  H.  D.  111.),  149 

Fed.  838-1906  (C.  C.  Mass.) 296,  298,  299,  360 

Dodd,  F.  H.,  et  al.  v.  H.  J.  Smith  ct  al,  144  Pa.  St.  340 524 

Dodge  Co.,  F.  W.,  v.  Construction  Information  Co.,  183  Mass.  62-1903,  66  N. 

E.  204,  60  L.  R.  A.  810 342 

Dodge  v.  Sewall,  142  Fed.  288 654 

Dodge  Stationery  Co.  v.  Dodge,  145  Cal.  380-1904,  78  Pac.  879.176,  186,  624,  695 

Donaldson  v.  Beckett,  2  Brown's  Pari.  Cas.  129-1774 473 

Donaldsons  v.  Becket,  4  Burrows,  2408 507,  509,  511 

DonneU  v.  Herring-Hall-Marvin  Safe  Co.,  208  U.  S.  267-1908 153,  154,  183 

Dooling  v.  Budget  Pub.  Co.,  144  Mass.  258-1887,  10  N.  E.  809 496,  499 

Doremus  v.  Hennessy,  176  111.  608-1898,  52  N.  Y.  924,  43  L.  R.  A.  797 349 

Dougherty  v.  Van  Nostrand,  1  Hoff.  Ch.  (N.  Y.)  68-1839 60 

Drake  Medicine  Co.  v.  Glessner,  68  Ohio  St.  337-1893,  67  N.  E.  722,  62  L.  R. 

A.  941 21,  148,  401,  403 


xxxiv  Table  of  Cases 

PAGE 

Draper  v.  Skerrett,  116  Fed.  206-1902  (C.  C.  E.  D.  Pa.) 19,  76,  396 

Drewry  &  Son  v.  Wood,  127  Fed.  887  (C.  C.  Minn.) 98 

Dninimond  v.  Altemas,  GO  Fed.  338 644 

Du  Bost  V.  Bercsford,  2  Campb.  511-1810 473 

Dunbar  v.  Glenn,  42  Wis.  118-1877 217,  402 

DiuiK  V.  Parker,  52  N.  Y.  494-1873 346 

Dunbp  Pneumatic  Tire  Co.,  Ltd.,  v.  Dunlop  Motor  Co.,  Ltd.,  22  R.  P.  C. 

533-1905  (Ct.  Scss.  Scotland) 173 

Dunnachie  v.  YounR,  10  Scot.  Sess.  Caa.  (4th  aer.)  874-1883 212 

Dunn  Co.  v.  Trix  Mfg.  Co.,  50  App.  Div.  (N.  Y.)  75-1900,  63  N.  Y.  Supp.  333.  .617, 

583 

Dunshee  v.  Standard  Oil  Co.,  152  Iowa,  618,  165  Iowa,  625 370,  560 

Dunstar  Co.  v.  Autosale  Gum  &  Chocolate  Co.,  113  Ms.  Dec.  265 437 

Dunston  v.  Los  Angeles  V.  &  S.  Co.,  165  Cal.  89 402 

Duryea  v.  Manufacturing  Co.,  79  Fed.  651,  25  C.  C.  A.  139,  2nd  Cir 153 

Dutton  &  Co.,  E.  P.,  V.  Cupples,  117  App.  Div.  (N.  Y.)  1st  Dept.  172-1907,  102 

N.  Y.  Supp.  309 278,  512,  517,  518 

Dwinell- Wright  Co.  v.  Co-operative  Supply  Co.,  148  Fed.  242,  155  Fed.  909.398, 

402,  6.54 
Dyer  Quarry  Co.,  John  T.,  v.  SchuylkiU  Stone  Co.,  185  Fed.  557 381,  402,  442 

E 

Eastern  Outfitting  Co.  v.  Mannheim,  59  Wash.  428 417,  418 

Eastman  Kodak  Co.  v.  Reichenbach  et  al,  20  N.  Y.  Supp.  110-1892,  aff'd  79 

Hun,  183 305,  310 

Eckhart  v.  Consolidated  Milling  Co.,  72  111.  App.  70-1897 255,  616 

Edelsten  v.  Edelsten,  1  De  G.  J.  &  S.  Ch.  185-1863,    10  L.  T.,  (N.  S.)  780.  .6,  661, 

716,  724,  725,  732 

Edelsten  v.  Vick,  11  Hare,  78-1853 688 

Edison  v.  Edison  Mfg.  Co.,  73  N.  J.  Eq.  136 168 

Edison  v.  Thomas  A.  Edison,  Jr.,  Chemical  Co.,  128  Fed.  957-1904  (C.  C.  Del.)  491 
Edison  Storage  Battery  Co.  v.  Edison  Automobile  Co.  of  Washington,  D.  C, 

67  N.  J.  Eq.  44-1904,  56  Atl.  861 639 

Edison  Mfg.  Co.  v.  Gladstone,  58  Atl.  391-1903 286 

Edison  v.  Mills-Edisonia  (N.  J.  Ch.),  70  Atl.  191-1908 291 

Edward  &  John  Burke,  Ltd.,  v.  Bishop,  175  Fed.  167 253 

Edward  Hilker  Mop  Co.  v.  U.  S.  Mop  Co.,  191  Fed.  613  (C.  C.  A.  6th  Cir.). .  .   248 

Eggers  V.  Hink,  63  Cal.  445-1883,  49  Am.  Rep.  96 112,  586 

Eiseman  v.  Schiffer,  157  Fed.  473-1907  (C.  C.  N.  Y.) 397,  455,  464,  697,  699 

Elbs  V.  Rochester  Egg  Carrier  Co.,  134  N.  Y.  Supp.  979-1912 177,  248 

Electric  Renovator  Mfg.  Co.  v.  Vacuum  Cleaner  Co.,  189  Fed.  754 495 

Elgin  Butter  Co.  v.  Elgin  Creamery  Co.,  155  111.  127-1895,  40  N.  E.  616 621 

Elgin  Nat.  Watch  Co.  v.  Eppenstein,  1  111.  C.  C.  602-1892 640 

Elgin  Natl.  Watch  Co.  v.  Illinois  Watch  Case  Co.,  179  U.  S.  665-1900,  21 

Supp.  Ct.  270,  45  L.  ed.  365 68,  226,  377,  389,  400,  609,  618,  637 

Elgin  Natl.  Watch  Co.  v.  Loveland,  132  Fed.  41-1904  (C.  C.  N.  D.  Iowa) .  .223,  638, 

639,  659 

Elks,  B.  P.  O.,  v.  Improved  B.  P.  O.  Elks,  205  N.  Y.  459 187 

Elliott  &  Co.  V.  Hodgson,  19  R.  P.  C.  518-1902 279 

Ellis  V.  Hurst,  70  Misc.  (N.  Y.)  122 544 


Table  of  Cases  xxxv 

PAGE 

Ellis  V.  Zeilin  &  Co.,  42  Ga.  91-1871 576 

El  Modello  Cigar  Mfg.  Co.  v.  Gato,  25  Fla.  886 716 

Emack  v.  Kane,  34  Fed.  46-1888  (C.  C.  lU.) 488,  490,  491,  492,  493,  501 

Emerson  v.  Badger,  101  Mass.  82-1869 63,  154 

Emperor  of  Austria  v.  Day  &  Kossuth,  3  De  G.  F.  &  J.  217-1861 473,  481 

Empire  Steam  Laundry  v.  Lozier,  165  Cal.  95-1913 306,  318 

England  v.  Downs,  6  Beav.  269-1842 32,  63 

England  v.  N.  Y.  Publishing  Co.,  8  Daly  (N.  Y.),  375-1878 151 

Enoch  Morgan's  Sons  Co.  v.  Hunkele,  8  Fed.  Cases,  724  (Case  No.  4493).. 577,  584 

Enoch  Morgan's  Sons  Co.  v.  Wendover,  43  Fed.  420 561 

Enoch  Morgan's  Sons  Co.  v.  Whittier-Coburn  Co.,  118  Fed.  657-1892  (C.  C.  N. 

D.  Cal.) 666 

Enterprise  Mfg.  Co.  v.  Landers,  Frary  &  Clark,  131  Fed.  240-1904  (C.  C.  A. 

2d  Cir.) 89,  277,  283,  591,  624,  639,  649 

Epperson,  J.  W.  &  Co.  v.  Blumenthal,  149  Ala.  125;  42  So.  863-1906 678 

Equitable  Relief  v.  Defamation  and  Injuries  to  Personality,  29  Harv.  Law  Rep. 

640-1916 506 

Ertz  V.  Produce  Exchange  of  Minneapolis,  79  Minn.  140-1900 365 

Estes  V.  Leslie,  27  Fed.  22-1886,  29  Fed.  91-1886  (C.  C.  S.  D.  N.  Y.)  .99,  520,  528 

Estes  V.  Williams,  21  Fed.  189 519 

Estes  V.  Worthington,  22  Fed.  822-1885,  30  Fed.  465,  31  Fed.  154-1887  (C.  C. 

S.  D.  N.  Y.) 519,  528,  639,  705 

Eureka  Fire  Hose  Co.  v.  Eureka  Rubber  Mfg.  Co.,  69  N.  J.  Eq.  159-1905,  60 

Atl.  561,  modification  refused,  s.  c,  65  Atl.  870-1907 93 

Evans  v.  Von  Laer,  32  Fed.  153-1887 253,  256 

Evenson  v.  Spaulding,  150  Fed.  517-1907  (C.  C.  A.  9th  Cir.),  9  L.  R.  A.  N.  S. 

904,  note 368,  551,  560 

Everett  Piano  Co.  et  al.  v.  George  P.  Bent,  60  111.  App.  372-1895 494 

Everett  Piano  Co.  v.  Maus,  200  Fed.  719 547 

Ewing  V.  Standard  Oil  Co.,  42  App.  D.  C.  321 456 

Excelsior  Shoe  Co.,  Re,  40  App.  D.  C.  480 431,  437,  438,  605 

Exchange  Telegraph  Co.,  Ltd.,  v.  Central  News,  2  Ch.  48-1897 297,  343 

Exchange  Telegraph  Co.,  Ltd.,  v.  Gregory  &  Co.,  73  L.  T.  120-1895,  1  Q.  B.  D. 

147-1896 297,  342,  343 

F 

Fahrney,  Dr.  Peter  H.,  &  Sons  Co.  v.  Ruminer,  153  Fed.  735-1907  (C.  C.  A. 

7th  Cir.) 600,  676,  693,  704 

Fairbank,  E.  T.,  &  Co.  v.  Des  Moines  Scale  and  Mfg.  Co.,  96  Fed.  972 642 

Fairbank,  N.  K.,  Co.  v.  R.  W.  Bell  Mfg.  Co.,  77  Fed.  869-1896  (C.  C.  A.  2d 

Cir.) 271,  585,  622,  625,  627,  652,  665 

Fairbank,  N.  K.,  Co.  v.  Central  Lard  Co.,  64  Fed.  133 397 

Fairbank,  N.  K.,  &  Co.  v.  Luckel,  King  and  Cake  Soap  Co.,  102  Fed.  327,  106 

Fed.  498-1901  (Cir.  Ct.  Oregon) 95,  96,  732,  733 

Fairbank,  N.  K.,  Co.  v.  Swift  &  Co.,  64  111.  App.  477-1896 91,  664 

Fairbank,  N.  K.,  Co.  v.  Windsor,  61  C.  C.  A.  233-1903,  124  Fed.  200-35  (C. 

C.  A.  2d  Cir.)  118  Fed.  96 619,  716,  722,  725,  730,  735 

Fairbanks  v.  Dunn,  126  Fed.  227 257,  561 

Fairbanks  v.  Jacobus.  14  Blatchf,  337 287 

Falk  V.  American  West  Indies  Trading  Co.,  180  N.  Y.  445-1905,  73  N.  E.  1123, 

1  L.  R.  A.  N.  S.  704,  note 46 


xxxvi  Table  of  Cases 

PAGE 

Falk  V.  American  West  Indies  Co.,  71  App.  Div.  (N.  Y.)  320-1902,  75  N.  Y. 

Supp.  964 151,  578 

Falk  V.  Cast  Lithograph  &  Engraving  Co.,  54  Fed.  890 512 

Farina  v.  Silvcrlock,  4  Kay  &  J.  650-1858 549 

Farmers'  Handy  Wagon  Co.  v.  Beaver  Silo,  etc.,  Co.,  236  Fed.  731-738-1917 

(C.  C.  A.  7th  Cir.) 557 

Farmers'  Loan  &  Trust  Co.  v.  Farmers'  Loan  &  Trust  Co.  of  KanvSas,  1  N.  Y. 

Supp.  44-1888,  21  Abb.  N.  C.  104 159,  166,  170,  188 

Farquhar,  A.  B.,  &  Co.  v.  National  Harrow  Co.,  102  Fed.  714-1900  (C.  C.  A. 

3d  Cir.),  42  C.  C.  A.  600,  49  L.  R.  A.  755 495,  501 

Faulder  &  Co.,  Ltd.,  v.  O.  &  G.  Rushton,  Ltd.,  20  R.  P.  C.  477-1902.  .  .  .71,    73 

205,  669 

Fauncc  v.  Searles,  122  Minn.  343-1913 351,  372 

Fay  v.  Lambourne,  124  App.  Div.  (N.  Y.)  245-1908 670 

Feder  v.  Bcnkert,  18  C.  C.  A.  549,  70  Fed.  613-1895 41,  219,  682 

Fels  V.  Christopher  Thomas  &  Bros.,  21  R.  P.  C.  85-1903  (High  Ct.  of  App.) .  .     72 

Felton  V.  Sellers  Co.,  4  Brcwst.  (Pa.)  42-1867  (Sup.  Ct.  Pa.) 682 

Ferguson-McKinney  Dry  Goods  Co.  v.  J.  A.  Scriven  Co.,  165  Fed.  655-1908 

(CCA.) 604 

Ferris  v.  Frohman,  223  U.  S.  435 511 

Fetridge  v.  Wells,  4  Abb.  Pr.  (N.  Y.)  144-1857,  13  How.  Pr.  (N.  Y.)  385-1857  671, 

674,  676,  677 

Filkins  v.  Blackman,  13  Blatchf.  (Conn.)  440-1876 50 

Filley  v.  Fassett,  44  Mo.  168-1869 92,  616 

Fine  Cotton  Spinners  and  Doublers  Assn.,  Ltd.,  v.  Harwood,  Cash  &  Co.,  Ltd., 

2  Ch.  184-1907 143 

Fischer  v.  Blank,  138  N.  Y.  244-1893,  33  N.  E.  1040 265,  583 

Fish  Bros.  Wagon  Co.  v.  Fish  Bros.  Mfg.  Co.,  95  Fed.  457-1899  (C  C  A.  8th 

Cir.) 44 

Fish  Bros.  Wagon  Co.  v.  La  Belle  Wagon  Works,  82  Wis.  546-1892,  52  N.  W. 

595,  16  L.  R.  A.  453 41,  146 

Fisk,  A.  G.,  v.  Fisk,  Clark  &  Flagg,  77  App.  Div.  (N.  Y.)  83-1902,  79  N.  Y. 

Supp.  37 61,  62 

Fishbeck  Soa])  Co.  v.  Kleeno  Mfg.  Co.,  44  App.  D.  C  6 452 

Flaccus  v.  Smith,  199  Pa.  St.  128-1901,  48  Atl.  894,  54  L.  R.  A.  640 335 

Flagg  Mfg.  Co.  V.  Holway,  178  Mass.  83-1901,  59  N.  E.  667 280,  287 

Flavel  V.  Harrison,  10  Hare,  467-1853,  19  Eng.  L.  &  Eq.  15 687 

Fleckenstein    Bros.   Co.    v.   Fleckenstein,   66    N.   J.    Eq.    252-1904,    57    Atl. 

1025 352 

Fleischmann  v.  Fleischmann,  7  App.  Div.  280 578 

Fleischmann  v.  Schuckmann,  62  How.  Pr.  92-1881 224,  401 

Fleischmann  v.  Starkey,  25  Fed.  127-1885  (C.  C.  R.  L) 594 

Fleming  v.  Newton,  1  H.  L.  Cas.  363-1848 481 

Flint  V.  Hutchinson  Smoke  Burner  Co.,  110  Mo.  492-1892,  19  S.  W.  804,  16 

L.  R.  A.  243 493 

Florence  Mfg.  Co.  v.  J.  C  Dowd  &  Co.,  178  Fed.  73,  171  Fed.  122.236,  393,  396,  421 

Florence  Mfg.  Co.  v.  Dowd,  189  Fed.  44  (C  C  A.  2d  Cir.) 722 

Fonotipia,  Limited,  v.  Bradley,  171  Fed.  951-1909 552 

Ford  v.  Foster,  L.  R.  7  Ch.  App.  611-1872 602,  670,  697,  708,  727 

Forney  v.  Engineering  News  Publishing  Co.,  10  N.  Y.  Supp.  814-1890 536 

Forster  Mfg.  Co.  v.  Cutter  Tower  Co.,  211  Mass.  223,  97  N.  E.  749 714 


Table  of  Cases  xxxvii 

PAGE 

Forster  Mfg.  Co.  v.  Cutter  Tower  Co.,  215  Mass.  136-1913,  101  N.  E.  1083.  .251, 

713,  714,  716,  727 

Forsythe  v.  Guzy,  N.  Y.  Supr.  Ct.,  O'Gorman,  J.,  Nov.  26,  1907 96 

Fort  Pitt  Building  &  Loan  Assn.,  etc.,  v.  Model  Plan  Building  &  Loan  Assn., 

159  Pa.  St.  308-1893 163 

Foss  V.  Roby,  195  Mass.  292,  81  N.  E.  199-1907 57,  58 

Foster  v.  Blood  Balm  Co.,  77  Ga.  216 ._. 407 

Foster-Milburn  Co.  v.  Chinn,  134  Ky.  424 168 

Foule  V.  Park,  131  U.  S.  88-1889,  33  L.  ed.  67,  9  Sup.  Ct.  658 359 

Fox  V.  Best  Baking  Co.,  209  Mass.  251-1911 238,  282 

Fox,  George  G.,  Co.  v.  Glynn,  191  Mass.  344-1906,  78  N.  E.  89,  9  L.  R.  A.  N.  S. 

1096,  note,  85  N.  E.  417-1908 35,  276,  281 

Fox,  George  G.,  Co.  v.  Hathaway,  199  Mass.  99-1905,  85  N.  E.  417 281 

Fowle  V.  Park,  131  U.  S.  88-1889,  33  L.  ed.  67,  9  Sup.  Ct.  658 64,  296,  298 

Fralich  v.  Despar,  165  Pa.  St.  24-1894,  30  Atl.  521 ' 305 

Francis  v.  Flinn,  118  U.  S.  385-1886,  30  L.  ed.  165,  6  Sup.  Ct.  1172 490,  499 

Frank  v.  Sleeper,  150  Mass.  583 406 

Franck  v.  Frank  Chicory  Co.,  95  Fed.  818-1899  (C.  C.  E.  D.  Wis.) .  . .  .239,  269,  595 

Frazer  v.  Frazer  Lubricator  Co.,  121  111.  147-1886,  13  N.  E.  639 40,  50,  51 

Frazier  v.  Bowling,  39  S.  W.  45-1897,  18  Ky.  L.  Rep.  1109 159,  219 

French  Republic  v.  Saratoga  Vichy  Co.,  191  U.  S.  427-1903,  48  L.  ed.  247,  24 

Sup.  Ct.  145 193,  204,  226,  410,  707,  734 

Frese  v.  Bachof,  14  Blatchf .  432-5-1878 241 

Freund  Bros.  &  Co.,  In  re,  37  App.  D.  C.  109 439 

Frohman  v.  Payton,  34  Misc.  (N.  Y.)  275 530 

Frohman  v.  Miller,  8  Misc.  379 532 

Frohman  v.  Morris,  Inc.,  68  Misc.  (N.  Y.)  461 531 

Frost,  Geo.,  Co.  v.  E.  B.  Estes  &  Sons,  156  Fed.  677-1907  (C.  C.  Mass.) 285 

FuUer  v.  HuflF,  43  C.  C.  A.  453,  144  Fed.  141-1900  (CCA.) 601 

FuUer  v.  Huff,  104  Fed.  141-1900  (C  C  A.),  51  L.  R.  A.  332 193,  622 

FuUwood  V.  FuUwood,  9  Ch.  Div.  176-1878 88,  110,  700 

Fulton  V.  Seller  &  Co.,  4  Brewst.  (Pa.)  42 219 

Funck  V.  Elevator  Co.,  142  Iowa,  621 568 

Funke  v.  Dreyfus  &  Co.,  34  La.  Ann.  80-1882 686 

G 

G.  &  J.  Tire  Co.  v.  G.  J.  G.  Motor  Car  Co.,  39  App.  D.  C.  508-1913. .  .406,  420, 

437,  453 
Gage-Downs  Co.  v.  Featherbone  Corset  Co.,  83  Fed.  213-1897  (Headnote) .  .   228 

Gaines  v.  Carlton  Imp.  Co.,  27  App.  D.  C.  571 436,  450 

Gaines  v.  Knecht,  27  App.  D.  C  530 435,  450 

Gaines  v.  Leslie,  25  Misc.  Rep.  20,  54  N.  Y.  Supp.  421 538 

Gaines  &  Co.  v.  Rock  Springs  Distilling  Co.,  226  Fed.  531  (C  C  A.  6th  Cir., 

1915) 446,  448,  465 

Gaines  &  Co.  v.  Sroufe,  117  Fed.  965 571,  572 

Gaines,  W.  A.,  &  Co.  v.  E.  Whyte  G.  F.  &  W.  Co.,  107  Mo.  App.  507 414 

Gambrill  Mfg.  Co.,  C.  A.,  v.  Waggoner-Gates  M.  Co.,  38  App.  D.  C  532 447 

Gannett  v.  Rupert,  127  Fed.  962-1904  (C  C  A.  2d  Cir.),  rev'g  119  Fed.  221 .537,  540 

Gamier  v.  Rossman,  195  Fed.  175 394,  406 

Garrett,  W.  E.,  &  Sons  v.  T.  H.  Garrett  &  Co.,  78  Fed.  472-1896,  24  C  C  A. 

173 117,  138,  177,  648 


xxxviii  Table  of  Cases 

PAGE 

Garst  V.  Charles,  187  Masa.  144,  72  N.  E.  839 360 

Garst  V.  Hall  &  Lyon  Co.,  179  MasH.  588-591-1901 379 

Gartsidc  v.  Outrain,  3  Jur.  N.  S.  39-1856 312 

Gato  V.  El  Modclo  Ci^ar  Mf^.  Co.,  6  L.  R.  A.  823-1889,  25  Fla.  886 662 

Gebbic  v.  Stitt,  82  Ilun  (N.  Y.),  93-1894,  31  N.  Y.  Supp.  102  (Gen.  T.  4th 

Dept.) 193,  216 

Gee  V.  Pritchard,  2  Swanst.  403-1818 473,  481 

General  Electric  Co.  v.  Anglo-American  Incandescent  Light  Co.,  114  Mo.  Dec.  8  437 

General  Electric  Co.  v.  Re-new  Lamp  Co.,  128  Fed.  154 406 

George  v.  Smith,  52  Fed.  830 412 

Germcr  Stove  Co.  v.  Art  Stove  Co.,  150  Fed.  141-1907  (C.  C.  A.  0th  Cir.) ....   599 

Gessler  v.  Grieb,  80  Wis.  21-1891,  48  N.  W.  1098 270 

Gibblett  V.  Read,  9  Mod.  459-1743 32,  302 

Gilbert  v.  Mickle,  4  Sandf.  Ch.  (N.  Y.)  357 488 

Gilka  V.  Mihalovitch,  50  Fed.  427-1892  (C.  C.  Ohio) 708 

Gillis  V.  Hall,  2  Brewst.  (Pa.)  342-1869 40 

Gillott  V.  Esterbrook,  48  N.  Y.  374-1872,  47  Barb.  (N.  Y.)  455-1867  105,  408,  703 

Gillott  V.  Kettle,  3  Ducr  (N.  Y.),  624-1854 105-254 

Gilly  V.  Hirsch,  122  La.  906 488,  550 

Ginn  &  Co.  v.  Appolo  Publishing  Co.,  115  Fed.  77L 524 

Ginesi  v.  Cooper  &  Co.,  14  Ch.  Div.  596-1880 34,  52,  53,  54 

Giragosian  v.  Chutjian,  194  Mass.  504-1907,  80  N.  E.  647-1907 598,  720 

Given  v.  N.  Y.  Athletic  Club,  42  App.  D.  C.  558 449 

Glaser  v.  St.  Elmo  Co.,  175  Fed.  276 534 

Glen  Cove  Mfg.  Co.  v.  Ludeling,  22  Fed.  823-1885  (C.  C.  S.  D.  N.  Y.) 98 

Glen  &  Hall  Mfg.  Co.,  The,  v.  C.  S.  Hall,  61  N.  Y.  226-1874 113,  114 

Glencoe  Land,  etc.,  Co.  v.  Hudson  Brothers,  etc.,  Co.,  138  Mo.  439-1896,  40 

S.  W.  93,  36  L.  R.  A.  804 335,  342 

Glendon  Iron  Co.  v.  Uhler,  75  Pa.  St.  467-1874 204 

Glenny  v.  Smith,  2  Drew.  &  Sm.  476-1865 87,  88,  109 

Globe  &  R.  F.  I.  Co.  v.  Firemen's  F.  F.  I.  Co.,  97  Misc.  148-1910 339 

Globe-Wernicke  Co.  v.  Brown  &  Besly,  121  Fed.  90-1902  (C.  C.  A.  7th  Cir.) .  15, 

276,  277,  394 
Globe-Wernicke  Co.  v.  Fred  Macey  Co.,  119  Fed.  696-1902  (C.  C.  A.  6th  Cir.) .  276 
Gluckman  v.  Strauch,  99  App.  Div.  (N.  Y.)  361-1904,  91  N.  Y.  Supp.  223.  ..  .   684 

Godillot  V.  American  Grocery  Co.,  71  Fed.  873-1896  (C.  C.  N.  J.) 102,  407 

Godillot  V.  Harris,  81  N.  Y.  263-1880 380,  406 

Goldmark  v.  Kreling,  35  Fed.  661 509 

Goldsmith  Silver  Co.  v.  Savage,  229  Fed.  623 407 

Gompcrs  v.  Buck's  Stove  &  Range  Co.,  221  U.  S.  418,  437 486 

Goodman  v.  Bohls,  3  Tex.  Civ.  App.  183-1893,  22  S.  W.  11 619 

Goodwin  v.  Hamilton,  19  Pa.  Co.  Ct.  652-1897,  6  Pa.  Dist.  705 112 

Goodwin  v.  Ivory  Soap  Co.,  18  R.  P.  C.  389-1901 595 

Goodyear  India  Rubber  Glove  Mfg.  Co.  v.  Goodyear  Rubber  Co.,  128  U.  S. 

598-1888,  32  L.  ed.  538,  9  Sup.  Ct.  166 144 

Goodyear  Rubber  Co.  v.  Day,  22  Fed.  44-1884  (C.  C.  E.  D.  Mo.) 641 

Gorham  Mfg.  Co.,  In  re,  41  App.  D.  C.  263 434 

Gorham  v.  Emery  &  Co.,  92  Fed.  779,  aff'd  104  Fed.  243 315 

Gorham  Mfg.  Co.  v.  Schmidt,  196  Fed.  955  (D.  C.  S.  D.  N.  Y.,  1912) 604 

Gorham  Mfg.  Co.  v.  Weintraub,  196  Fed.  957,  180  Fed.  639,  176  Fed.  927.  .382, 

414,  464,  572,  573 


Table  of  Cases  xxxix 

PAGE 

Gott  V.  Berea  College,  156  Ky.  376 366 

Gould  V.  Head,  41  Fed.  240 568 

Gouraud  v.  Trust,  6  Thomps.  &  Cook  (N.  Y.),  133-1875 158 

Gout  V.  Alepoglu,  6  Beav.  69-1833 108 

Gove  V.  Condon,  40  L.  R.  A.  382 354 

Graham  v.  Plate,  40  Cal.  593-1871,  6  Am.  Rep.  639 716,  717,  725,  727 

Graham  v.  St.  Charles  S.  R.  Co.,  47  La.  Ann.  214-1895 367 

Grand  Hotel  Co.  v.  Wilson,  21  R.  P.  C.  117-1903 218 

Grand  Lodge  of  the  Ancient  Order  of  United  Workmen  of  the  State  of  Iowa  v. 

Graham,  31  L.  R.  A.  133-1895,  96  Iowa,  592,  65  N.  W.  837 164 

Grand  Lodge,  Knights  of  Pythias  v.  Creswill,  128  Ga.  775-1907,  58  S.  E.  163 . .  187 
Grand  Rapids  School  Furniture  Co.  v.  Haney  School  Furniture  Co.,  92  Mich. 

558-1892,  52  N.  W.  1009,  16  L.  R.  A.  721 492 

Greacen  v.  Bell,  115  Fed.  553-1902  (C.  C.  N.  J.) 50,  51 

Great  Union  Tea  Co.  v.  Dodds,  164  Mich.  50-1910 319 

Green,  Re,  8  Pat.  Off.  Gaz.  729-1875 227 

Green  v.  Button,  2  C,  M.  &  R.  707 327,  338 

Green  v.  Folgham,  1  Sim.  &  St.  398-1823 300,  315 

Greene,  Tweed  &  Co.  v.  Mfrs.  Belt  Hook  Co.,  158  Fed.  640-1906  (C.  C.  111.).  413 

Gregory  v.  Duke  of  Brunswick,  6  M.  &  G.  953-1844 345 

Gretsch  Manufacturing  Company,  Fred,  v.  Michael  E.  Schoening,  &  Dudley 

Field  Malone,  6  Trade-Mark  Rep.  224 466 

Grierson  v.  Birmingham  Hotel  Co.,  18  R.  P.  C.  158 668 

Grocers  Journal  Co.  v.  Midland  Pub.  Co.,  127  Mo.  App.  356 416 

Grocers  Supply  Co.  v.  Dupius,  219  Mass.  576  (107  N.  E.  389) 269 

Grow  V.  Seligman,  47  Mich.  607-1882,  11  N.  W.  404 42 

Gruber  Almanack  Co.  v.  Swingley,  103  Md.  362,  63  Atl.  684-1906 686 

Guardian  Fire  and  Life  Assur.  Co.  v.  Guardian  and  Gen.  Ins.  Co.,  50  L.  J.  Ch. 

N.  S.  253-1880 621 

Guethler  v.  Altman,  26  Ind.  App.  587 366 

Gulden  v.  Chance,  182  Fed.  303-1910  (C.  C.  A.  3d  Cir.) 242,  252 

Gumbinner,  Matter  of,  92  Misc.  (N.  Y.)  104 65 

Gunter  v.  Astor,  4  J.  B.  Moore,  12-1819 327,  339 

Guth  V.  Guth,  224  Fed.  934-1915  (C.  C.  A.  4th  Cir.) 159 

Guth  Chocolate  Co.  v.  Guth,  215  Fed.  750-765 133 

H 

Hainque  v.  Cyclops  Iron  Works,  136  Cal.  351-1902,  68  Pac.  1014 17 

Hall's  Appeal,  60  Pa.  St.  458-1869,  100  Am.  Dec.  584 47,  52 

Hall  V.  Barrows,  9  Jur.  N.  S.  483-1863,  4  De  G.  J.  &  S.  150-1863 25,  60 

Hall  Safe  Co.  v.  Herring-Hall-Marvin  Safe  Co.,  31  App.  D.  C.  498 450 

Hall's  Safe  Co.  v.  Herring-HaU-Marvin  Safe  Co.,  146  Fed.  37-1906  (C.  C.  A. 

6th  Cir.),  208  U.  S.  554-1908 639 

Hall  V.  Ingram,  28  App.  D.  C.  454 436 

Hall  V.  Stern,  20  Fed.  788  (C.  C.  S.  D.  N.  Y.) 718 

Hall  Signal  Co.  v.  Railway  Signal  Co.,  153  Fed.  907 236 

Hallett  V.  Cumston,  110  Mass.  29-1872 61 

Hamilton-Brown  Shoe  Co.  v.  Wolf  Bros.  Co.,  240  U.  S.  251,  36  Sup.  Ct.  Rep.  269.401, 

441,  715,  728 
Hamilton  Mfg.  Co.  v.  Tubbs  Mfg.  Co.,  216  Fed.  401-1908 308,  310 


xl  Table  of  Cases 

PAGE 

Hammer  v.  Barnes,  26  How.  Pr.  174-1863 300 

Hanna  v.  Andrews,  50  Iowa,  462-1879 52 

Hannis  Distilling  Co.  v.  Geo.  W.  Torrey  Co.,  32  App.  D.  C.  530 696 

Hanover  Star  Milling  Co.  v.  Allen  &  Wheeler  Co.,  208  Fed.  513-1913,  125  C.  C. 

A.  515,  affd.  240  U.  S.  403-1915 30,  390,  397,  418,  419,  700 

Hanover  Star  Milling  Co.  v.  Metcalf,  240  U.  S.  403-1916.  .26,  28,  29,  74,  76,  206, 

378,  419,  696,  699 

Hansen  v.  Siegel-Cooper  Co.,  106  Fed.  691-1900  (C.  C.  S.  D.  N.  Y.) 72,  644 

Hardy  v.  Cutter,  3  U.  S.  Pat.  Gaz.  468-1873,  16  Phila.  182 156 

Harper  v.  Holman,  84  Fed.  222 571 

Harper  &  Bros.  v.  Lare,  103  Fed.  203-1900  (C.  C.  A.  3d  Cir.) 527 

Harper  v.  Pearson,  3  L.  T.  N.  S.  547-1861 15,  113 

Harper  v.  Ranous,  G7  Fed.  904 • 528 

Harrison  v.  Gardner,  2  Mad.  198-1817 60 

Harrison  v.  Glucose  Co.,  116  Fed.  304 296 

Harrison  v.  Taylor,  11  Jur.  N.  S.  408-1865 704,  732,  733 

Hart  V.  Aldridge,  1  Cowp.  (N.  Y.)  54-1774 327,  339 

Hartnett  v.  Plumbers,  etc.,  169  Mass.  229 340 

Hartzler  v.  Goshen  Churn  &  Ladder  Co.,  55  Ind.  App.  455-1914,  104  N.  E. 

Rep.  34 171,  172,  622 

Harvey,  G.  F.,  Co.  v.  National  Drug  Co.,  75  App.  Div.  (N.  Y.)  103-1902,  77 

N.  Y.  Supp.  674 308,  320 

Haskins  v.  Royster,  70  N.  C.  601-1874 339,  342 

Haslinghuis  v.  P.  Harrington  Sons,  237  Fed.  301  (D.  C.  N.  H.,  1916)  (7  T.  M. 

Rep.  4) 269 

Havana  Commerical  Co.  v.  Nichols,  155  Fed.  302-1907  (C.  C.  S.  D.  N.  Y.) . .   708 

Havens  v.  Burns,  188  Fed.  441 570 

Hawker  v.  Stourfield  Park  Hotel  Co.,  Wkly.  Notes,  51-1900 505 

Hazard  v.  Caswell,  93  N.  Y.  259 218 

Hazelton  Boiler  Co.  v.  Hazelton  Tripod  Boiler  Co.,  142  111.  494-1892,  30  N. 

E.  339 39,  50,  165,  182,  383 

Hazelton  Boiler  Co.  v.  Hazelton  Tripod  Boiler  Co.,  137  111.  231-1891,  28  N.  E. 

248 162 

Hazlett  V.  PoUack  Stogie  Co.,  188  Fed.  494,  aff'd  195  Fed.  28 683 

Heath  v.  American  Book  Co.,  97  Fed.  533-1899  (C.  C.  W.  Va.) 349 

Heaton,  In  re,  L.  R.  27  Ch.  Div.  570-1884 709 

Hegeman  v.  Hegeman,  8  Daly  (N.  Y.),  1-1880 218,  682 

Heide  v.  Wallace  &  Co.,  135  Fed.  346-1905  (C.  C.  A.  3d  Cir.)  at  p.  347 88,  89 

G.  Heilman  Brewing  Co.  v.  Independent  Brewing  Co.,  191  Fed.  489.  .430,  468, 

570,  588 

Heinisch's  Sons'  Co.  v.  Boker,  86  Fed.  765-1898  (C.  C.  S.  D.  N.  Y.) 623 

Heinz  v.  Lutz  Bros.,  146  Pa.  St.  592-1891,  23  Atl.  314 273,  594 

Helmore  v.  Smith,  C.  A.  1886,  35  Ch.  Div.  449 503,  559 

Heminway  v.  Heminway,  58  Conn.  443-1895 321 

Hendriks  v.  Montagu,  50  L.  J.  (Ch.)  N.  S.  456-1881 640,  641 

Hennessy  v.  Branuschweiger  &  Co.,  89  Fed.  664-1898  (C.  C.  Cal.) 425,  429 

Hennessy  v.  Dompe,  19  R.  P.  C.  333-1902 239 

Hennessy  v.  Herrmann,  89  Fed.  069-1898  (C.  C.  N.  D.  Cal.) 549,  574 

Hennes.sy  v.  Hogan,  6  W.,  W.  &  A'B.  225 254 

Hennessy  v.  Neary,  19  R.  P.  C.  36-1901 255 

Hennessy  v.  White,  6  W.,  W.  &  A'B.  216-1869  (Victoria) 254 


Table  of  Cases  xli 

PAGE 

Hennessey  v.  Wine  Growers'  Assn.,  212  Fed.  308-1914  (D.  C.  S.  D.  N.  Y.) .  .604,  721 
Hennessey  v.  Wilmerding-Loewe  Co.,  103  Fed.  90-93-1900  (C.  C.  N.  D.  Cal.).  .713, 

714,  728 

Henry  v.  A.  B.  Dick  Co.,  224  U.  S.  1-1911 299 

Herbst,  Re,  44  App.  D.  C.  203 452 

Herbst,  Re,  32  App.  D.  C.  269 452,  454 

Herbst  Importing  Co.,  In  re,  30  App.  D.  C.  297 435 

Herring-HaU-Marvin  Safe  Co.  v.  Hall's  Safe  Co.,  208  U.  S.  554-1908.  .  .64,  67, 

155,  204,  655,  656 

Heublein  v.  Adams,  125  Fed.  782 397 

Heusner  v.  Baugher,  248  Pa.  536,  94  Atl.  225 250 

Hier  v.  Abrahams,  82  N.  Y.  519-1880 386,  398,  662 

Higgins,  C.  S.,  Co.  v.  Higgins  Soap  Co.,  144  N.  Y.  462-1895,  18  N.  E.  714, 

39  N.  E.  490,  27  L.  R.  A.  42. . .  .41,  50,  124,  134,  147,  153,  162,  175,  182, 

185,  193,  646,  647,  655 
HUdreth  v.  McCaul,  70  App.  Div.  (N.  Y.)  162-1902  (1st  Dept.),  74  N.  Y.  Supp. 

1072 58 

Hildreth  v.  McDonald  Co.,  164  Mass.  16-1895,  41  N.  E.  56 271,  631 

Hildreth  v.  Norton,  159  Fed.  428-1908  (CCA.) 236 

Hildreth  v.  Sparks  Mfg.  Co.,  99  Fed.  484-1899  (C  C  S.  D.  N.  Y.) 549 

Hilker  Mop  Co.,  Edward,  v.  U.  S.  Mop  Co.,  191  Fed.  618 557 

HiU  V.  Hart  Davies,  L.  R.  21  Ch.  Div.  798-1882 475 

Hill  V.  Lockwood,  32  Fed.  389-1887  (C  C  E.  D.  Wis.) 218 

Hillside  Chemical  Co.  v.  Munson  &  Co.,  146  Fed.  198-1906  (C  C  Conn.)  638,  667 

Hilson  Co.  V.  Foster,  80  Fed.  896-1897  (C  C  S.  D.  N.  Y.) 25 

Hine  v.  Lart,  10  Jur.  106 401 

Hiram  Holt  Co.  v.  Wadsworth,  41  Fed.  34 395 

Hires,  Chas.  E.,  Co.  v.  Consumers'  Co.,  100  Fed.  809-1900  (C  C  A.  7th  Cir.).252, 

650 
Hires,  Charles  E.,  Co.  v.  George  A.  Hires,  182  Pa.  St.  346-1897,  37  Atl.  1117 

146,  148 

Hires,  Chas.  E.,  Co.  v.  Simpkins,  179  Fed.  1012 572,  573 

Hirst  V.  Denham,  L.  R.  14  Eq.  Cas.  542-1872 227,  401 

Hobbs  V.  Francais,  19  How.  Pr.  (N.  Y.)  567-1860 671,  683 

Hoff,  In  re,  33  App.  D.  C  233 435,  447 

Hogg  V.  Kirby,  8  Ves.  Jr.  215-1803 5,  10 

Holbrook  v.  Nesbitt,  163  Mass.  120-1895,  39  N.  E.  794  (from  headnote) 87 

Holden,  Admr.  v.  M'Makin,  1  Pars.  Sel.  Cas.  (Pa.)  270-1847 60 

Holeproof  Hosiery  Co.  v.  Richmond  Hosiery  Mills,  167  Fed.  381 577 

Holeproof  Hosiery  Co.  v.  WaUach  Bros.,  167  Fed.  373,  aff'd  s.  c.  172  Fed.  859, 

(C  C  A.)  final  hearing  190  Fed.  606,  192  Fed.  534 244,  394,  605,  694 

Hollenbeck  v.  Restioe,  114  Iowa,  358 354 

Holloway  v.  Clent,  20  R.  P.  C  525-1903 36 

HoUoway  v.  HoUoway,  13  Beav.  209-1850 72,  73,  117,  148 

Holmes,  Booth  &  Haydens  v.  Holmes,  Booth  &  Atwood  Mfg.  Co.,  37  Conn. 

278-1870.  . 50,  146,   182,  612,  615,  616,  625,  695 

Holmes,  Wilkop,  v.  Boyce,  61  Misc.  (N.  Y.)  126-131,  aff'd  no.  op.  131  A.  D. 

(N.  Y.)  922 306 

Holmes  v.  Hurst,  174  U.  S.  82-84 508,  511 

Holt  V.  Menendez,  23  Fed.  869 413 

Hooker  C  &  M.  Co.  v.  Hooker,  95  Atl.  649 372 


xlii  Table  of  Cases 

PAGB 

liookham  v.  Pottage,  L.  R.  8  Ch.  App.  91-1872 87,  88,  101 

Hopkins,  In  re,  29  App.  Cas.  (D.  C.)  118-1907 230,  439,  445 

Hopkins  Amusement  Co.  v.  Frohman,  103  III.  App.  613-1902 20,  535 

Ilojjkins  Amusement  Co.  v.  Frohman,  202  111.  541 530 

Horlick's  Malted  Milk  Co.  v.  A.  Spiegel  Co.,  155  Wis.  201-1913 605 

Ilorsburgh,  Matter  of,  53  L.  J.  Ch.  237 397 

Ilorton  Mfg.  Co.  (N.  Y.)  v.  Horton  Mfg.  Co.  (Ind.),  18  Fed.  816-1883 40 

Hostetter  v.  Adams,  10  Fed.  838-1882  (C.  C.  S.  D.  N.  Y.) 256 

Ilostetter  Co.  v.  Becker,  73  Fed.  297-189G  (C.  C.  S.  D.  N.  Y.) 255,  604 

Hostetter  Co.  v.  Brueggeman-Rcinert  Distilling  Co.,  4G  Fed.  188-1891  (C.  C. 

E.  D.  Mo.) 256,  604 

Hostetter  v.  Brunn,  107  Fed.  707-1901  (C.  C.  S.  D.  Cal.) 606 

Hostetter  Co.  v.  Conron,  111  Fed.  737-1901  (C.  C.  S.  D.  N.  Y.) 604,  605 

Hostetter  v.  Fries,  17  Fed.  620-1883  (C.  C.  S.  D.  N.  Y.) 145 

Hostetter  Co.  v.  E.  0.  Lyons  Co.,  99  Fed.  734 576 

Hostetter  v.  Martinoni,  110  Fed.  524-1901  (C.  C.  N.  D.  Cal.) 256,  669 

Hostetter  Co.  v.  Schneider,  107  Fed.  705-1900  (C.  C.  E.  D.) 604 

Hostetter  Co.  v.  Sommers,  84  Fed.  333-1897  (C.  C.  S.  D.  N.  Y.) 256,  593,  604 

Hovey  v.  Rubber  Tip  Pencil  Co.,  57  N.  Y.  119-1874 494 

Howard  v.  Henriques,  3  Sandf .  (N.  Y.)  725-1851 15,  84,  98 

Howard  v.  Taylor,  90  Ala.  241-1889,  8  So.  36 32 

Howard  Dustless  Duster  Co.  v.  Carleton,  219  Fed.  913 241,  242 

Howe  V.  Searing,  6  Bosw.  (N.  Y.)  354-1860 60 

Howe  Scale  Co.  v.  WyckofT,  Seamans  &  Benedict,  198  U.  S.  118-1905,  49  L.  ed. 

972,  25  Sup.  Ct.  609 13,  133,  137,  154,  161,  173,  174,  175 

Howes,  S.,  Co.  V.  Howes  Grain  Cleaner  Co.,  24  Misc.  (N.  Y.)  83-1898,  52  N.  Y. 

Supp.  468 64,  732 

Howes,  S.,  Co.  V.  Howes  Grain  Cleaner  Co.,  19  App.  Div.  (N.  Y.)  625-1897, 

46  N.  Y.  Supp.  165 180 

Hoxie  V.  Chaney,  143  Mass.  592,  10  N.  E.  713 38,  40,  47,  53 

Hoyt  V.  Hoyt,  143  Pa.  St.  623-1891,  22  Atl.  755,  13  L.  R.  A.  343 686 

Hoyt  V.  J.  T.  Lovett  &  Co.,  71  Fed.  173 381 

Hoyt  V.  Hoyt,  143  Pa.  St.  623-1891,  22  Atl.  755,  13  L.  R.  A.  343 244 

Hudson  V.  Osborne,  39  L.  J.  Ch.  N.  S.  79-1869 49 

Huggonson  Case,  2  Atk.  488-1742 481 

Hughes  V.  Samuels  Bros.,  159  N.  W.  589  (Iowa  Supreme  Court,  Oct.  17, 

1916 497 

Hughes  V.  Alfred  H.  Smith  Co.,  205  Fed.  302,  aff'd  209  Fed.  37.  .394,  397,  409, 

448,  457 

Hump  Hairpin  Co.  v.  De  Long  Hook  &  Eye  Co.,  39  App.  D.  C.  484 431,  436 

Hunt  V.  Ehrmann,  27  R.  P.  C.  512 ":  .  . , 563 

Hunt  V.  N.  Y.  Cotton  Exchange,  205  U.  S.  322-1907,  51  L.  ed.  821,  7  Sup.  Ct. 

529 300 

Hunt  V.  Simmons,  19  Mo.  583 366 

Huntley  &  Palmer  v.  Reading  Biscuit  Co.,  Ltd.,  10  R.  P.  C.  277-1893 214,  640 

Huskie  v.  Griffin,  75  N.  H.  345-1909 333,  365,  371 

Hutchinson  v.  Nay,  187  Mass.  262 317 

Hutchinson,  Pierce  &  Co.  v.  Loewy,  217  U.  S.  457 461 

Hutchinson,  Pierce  &  Co.  v.  Loewy,  163  Fed.  42 436 

Hutton  V.  Walters,  132  Tenn.  527-1915 334,  367 

Huwer  v.  DannenhofTer,  82  N.  Y.  499-1880 42 


Table  of  Cases  xliii 

PAQB 

Hygeia  Distilled  Water  Co.  v.  Consolidated  Ice  Co.,  144  Fed.  139-1906  (C.  C. 

Pa.),  151  Fed.  10-1907  (C.  C.  A.  3d  Cir.) 73 

Hygeia  Distilled  Water  Co.  v.  Hygeia  Ice  Co.,  70  Conn.  516 606 

I 

Ibbotson  V.  Peat,  3  H.  «S;  C.  644 325 

Ide  V.  Engine  Co.,  31  Fed.  901 490 

Illinois  Cent.  R.  Co.  v.  Caffrey,  128  Fed.  770-1904  (C.  C.  Mo.) 344,  553 

Illinois  Commission  Co.  v.  Cleveland  Tel.  Co.,  119  Fed.  301 553 

Imperial  Mfg.  Co.  v.  Schwartz,  105  111.  App.  525-1903 172,  180,  181 

Improved  Fig  Syrup  Co.  v.  California  Fig  Syrup  Co.,  4  C.  C.  A.  264-1893,  54 

Fed.  175 211 

Independent  Baking  Powder  Co.  v.  Boorman,  175  Fed.  448.  .382,  386,  417,  464,  697 

Independent  Breweries  Co.,  In  re,  39  App.  D.  C.  118 435,  437 

Indian  Portland  Cement  Co.,  In  re,  30  App.  D.  C.  463 435 

Indurated  Fibre  Co.  v.  Amoskeag  Indurated  F.  W.  Co.,  37  Fed.  695 396 

Industrial  Press  v.  W.  R.  C.  Smith  Pub.Co.,  164  Fed.  842-1908  (C.  C.  A.)  .572,  575 

Inland  Rev.  Commissioners  v.  MuUer  &  Co.,  App.  Cas.  217-1901 43 

Insurance  Oil  Tank  Co.  v.  Scott,  33  La.  Ann.  946-1881 395,  597,  606,  690 

International  Cheese  Co.  v.  Phenix  Cheese  Co.,  118  App.  Div.  (N.  Y.)  499-1907, 

103  N.  Y.  Supp.  362  (3d  Dept.) 227,  402 

International  Committee,  Y.  W.  C.  A.  v.  Y.  W.  C.  A.  of  Chicago,  194  111.  194- 

1902,  62  N.  E.  551,  56  L.  R.  A.  888 167,  621 

International  Food  Co.  v.  Price  Baking  Powder  Co.,  37  App.  D.  C.  137 439 

International  Plasmon,  Ltd.,  v.  Plasmonade,  Ltd.,  22  R.  P.  C.  543-1905  (Ch. 

Div.) 97 

International  Silver  Co.  v.  W.  H.  Rogers  Corp.,  66  N.  J.  Eq.  140-1904,  57  Atl. 

1037 173,  733,  734 

International  Register  Co.  v.  Recording  Fare  Register  Co.,  151  Fed.  199-1907 

(C.  C.  A.  2d  Cir.) 314 

International  Silver  Co.  v.  Rogers,  72  N.  J.  Eq.  933,  67  Atl.  105-1907,  reversing 

63  Atl.  977 129,  132,  144,  145 

International  Silver  Co.  v.  Wm.  H.  Rogers  Corp.,  67  N.  J.  Eq.  646-1905,  60  Atl. 

187,  rev'g  66  N.  J.  Eq.  119,  57  Atl.  1037-1904 130,  132,  137,  734 

International  Silver  Co.  v.  Wm.  G.  Rogers,  113  Fed.  526-1902,  aff'd  118  Fed. 

133-1902 132 

International  Silver  Co.  v.  Simeon  L.  &  George  H.  Rogers  Co.,  110  Fed.  955- 

1901  (C.  C.  Conn.) 131,  642 

International  Silver  Co.  v.  Rogers  Bros.  Cutlery  Co.,  136  Fed.  1019-1905  (C.  C. 

W.  D.  Mich.  5th  Dept.) 132 

International  Tooth  Crown  Co.  v.  Carmichael,  44  Fed.  350 490 

International  Trust  Co.  v.  International  Loan  &  Trust  Co.,  153  Mass.  271-1891, 

26  N.  E.  693,  10  L.  R.  A.  753 171 

Investor  Publishing  Co.  of  Mass.  v.  Dobinson,  72  Fed.  603-1896,  modified  in  82 

Fed.  56-1897  (C.  C.  S.  D.  Cal.) 50,  170,  525,  540,  571,  577,  578,  621 

Iron-Ox  Remedy  Co.,  Ltd.,  v.  Co-operative  Wholesale  Soc,  Ltd.,  24  R.  P.  C. 

425-1907  (Ch.  Div.,  Parker,  J.) 97 

Isaacs  v.  Daly,  39  N.  Y.  Superior  Ct.  511 532 

Isaacson  v.  Thompson,  41  L.  J.  Ch.  N.  S.  101-1871 705 

Italian  Swiss  Colony  v.  Italian  Vineyard  Co.,  158  Cal.  252,  110  Pac.  913.  .388,  405, 

406 


xliv  Table  of  Cases 

PAGE 

Jackson  v.  Stairficld,  137  Ind.  592 337 

Jiiokson  Corset  Co.  v.  Cohen,  38  App.  D.  C.  482 377,  455 

Jacobs  V.  Beecham,  221  U.  S.  263 683 

James  v.  James,  13  Eq.  421-1872 303 

Jameson  v.  Clarke,  19  R.  P.  C.  225 563 

Jainieson  v.  Jamicson,  15  R.  P.  C.  169-1897 142 

Jaysee  Corset  Co.,  In  re,  201  Fed.  779 378 

Jenkins  Bros.  v.  Kelly  &  Jones  Co.,  212  Fed.  328 732 

Jennings  v.  Johnson,  37  Fed.  364-1888  (C.  C.  Me.) 219,  268,  682,  685 

Jesse  L.  Laakey  Feature  Play  Co.  v.  Wm.  Fox  V.  Co.,  93  Misc.  364 352 

Jewelers  Mercantile  Agency  v.  Jewelers  Publishing  Co.,  155  N.  Y.  241.  .  .  .510,  511 
Jewish  Colonization  Assn.  v.  Solomon  &  Germanski,  125  Fed.  994-1903  (C.  C. 

N.  Y.) 570,  577,  637,  638 

Jewish  Colonization  Assn.  v.  Solomon  &  Germansky,  154  Fed.  157 398,  402 

Johnson  v.  Bauer  &  Black,  82  Fed.  662-1897 246 

Johnson  v.  Brandau,  32  App.  D.  C.  348 439,  450 

Johnson  v.  Helleley,  2  De  G.  J.  &  S.  446-1864 52 

Johnson  v.  Hitchcock,  3  N.  Y.  Supp.  680-1888  (Sup.  Ct.  Sp.  T.) 112 

Johnson  v.  Whelan,  33  App.  D.  C.  4 431 

Johnson  &  Johnson  v.  Seabury  &  Johnson,  69  N.  J.  Eq.  696-706,  61  Atl.  5- 

1905,  71  N.  J.  Eq.  750,  67  Atl.  36-1907 673,  690,  692 

Johnson  Co.  v.  Smith  &  Co.,  37  App.  D.  C.  107 436 

Johnson  Educator  Food  Co.  v.  Sylvanus  Smith  &  Co.,  Inc.,  37  App.  D.  C.  107 .  452 

Johnston  &  Co.  v.  Orr  Ewing  &  Co.,  L.  R.  7  App.  Cas.  219-25-1882 108,  587 

Jones  V.  Goodrich,  17  111.  380 114 

Jones  V.  Hallworth,  14  R.  P.  C.  225-1897 241 

Jones  &  Jester  v.  Blocker,  43  Ga.  331-1871 339 

Jones  V.  Stanly,  76  N.  C.  355-1877 337,  338,  340,  341 

Joyce  V.  Gt.  Northern  Ry.  Co.,  100  Minn.  225,  229-1907 363,  371 

JuHan  V.  Hoosier  Drill  Co.,  78  Ind.  408-1881 231,  698,  702 

Jurgens,  Andrew,  Co.  v.  Woodbury,  56  Misc.  (N.  Y.)  404,   106  N.  Y.  Supp. 

571-1907  (Sup.  Ct.  N.  Y.  Sp.  T.) 40 

K 

Kahn  v.  W.  A.  Gaines  &  Co.,  161  Fed.  495  (C.  C.  A.) 413 

Kann  v.  Diamond  Steel  Co.,  89  Fed.  706-1898  (C.  C.  A.  8th  Cir.),  32  C.  C.  A. 

324 624,  625 

Kansas  Milling  Co.  v.  Kansas  Flour  MiUs  Co.,  89  Kansas,  855-1913,  133  Pac. 

Rep.  542 188,  615,  620 

Kathreiner's  MalzkafTee  v.  Pastor  Kneipp  Med.  Co.,  82  Fed.  321-1897,  27  C. 

C.  A.  351,  53  U.  S.  App.  425 247,  412,  415 

Kaufman  v.  Kaufman,  123  N.  Y.  Supp.  699 133 

Kayser  v.  Italian  Co.,  160  App.  Div.  N.  Y.  607-1914.  .197,  401,  440,  442,  461, 

465 

Keahon,  Matter  of,  60  Misc.  (N.  Y.)  508 65 

Keasbey  v.  Brooklyn  Chemical  Works,  142  N.  Y.  467 394 

Keeble  v.  Hickeringill,  11  East,  574,  Holt,  14 324,  325,  326,  327,  329 

Keller  v.  B.  F.  Goodrich  Co.,  117  Ind.  556-1888,  19  N.  E.  196 237,  622 

Kelley  v.  YpsUanti  Dress  Stay  Co.,  44  Fed.  23 492 


Table  of  Cases  xlv 

PAGE 

Kellogg  Toasted  Corn  Flake  Co.  v.  Quaker  Oats  Co.,  235  Fed.  Rep.  657-665. .  600, 

603 

Kelly  V.  Byles,  13  Ch.  Div.  082 515 

Kennedy  v.  Holt,  128  U.  S.  514 409 

Kennedy  v.  Press  Pub.  Co.,  41  Hun  (N.  Y.),  422-1886 499 

Kentucky  Distilleries  Co.  v.  Old  Lexington  Club  Distilling  Co.,  31  App.  D.  C. 

223 438 

Kentucky  Distilleries  and  Warehouse  Co.  v.  Wathen,  110  Fed.  641-1901  (C.  C. 

Ky.) 94 

Kerry  v.  Toupin,  60  Fed.  272 410 

Kessler  &  Co.  v.  Goldstrom,  177  Fed.  392-1910 581,  603,  604,  721 

Kettorer  v.  Armour,  200  Fed.  322 635 

Keystone  Type  Foundry  v.  Portland  Pub.  Co.,  180  Fed.  301 721 

Kidd  V.  Horry,  28  Fed.  773-1886  (C.  C.  Pa.) 483,  484,  488,  489,  495,  499 

Kidd  V.  Johnson,  100  U.  S.  617-1879,  25  L.  ed.  769 40,  43,  47,  49 

Kiernan  v.  Manhattan  Quotation  Telegraph  Co.,  50  How.  Pr.  (N.  Y.)  194- 

1876 294,  300 

Kildow  Cigar  Co.,  T.  M.,  v.  George  B.  Sprague  Cigar  Co.,  35  App.  D.  C.  345- 

1910 385,  437 

King  &  Co.  V.  Gillard,  21  R.  P.  C.  589 243 

King  &  Co.,  Ltd.,  v.  Gillard  &  Co.,  Ltd.,  22  R.  P.  C.  327-1905,  aff'g  21  R.  P.  C. 

589 273 

King  &  Co.,  C.  L.,  v.  Inlander,  133  Fed.  416 571 

Kipling  V.  Fenno,  100  Fed.  692 523 

Kipling  V.  G.  P.  Putnam's  Sons,  120  Fed.  631,  65  L.  R.  A.  873.  .376,  512,  516,  524, 

619 

Klaw  V.  General  Film  Co.,  154  N.  Y.  Supp.  988-1915 533 

Kline  v.  Eubanks,  109  La.  241-1802,  33  So.  211 335 

Klingel's  Pharmacy  v.  Sharpe  &  Doelune,  104  Md.  218  (7  L.  R.  A.  N.  S.  976) .   365 

Klotz  V.  Hecht,  73  Fed.  822-1896  (C.  C.  S.  D.  N.  Y.) 268 

Knickerbocker  Ice  Co.  v.  Gardiner  Dairy  Co.,  107  Md.  556  (16  L.  R.  A.  N.  S. 

746) 365,  372 

Knights  of  Macabees  v.  Searlo,  75  Neb.  285,  106  N.  W.  448 187 

Knight  &  Sons  v.  Crisp  &  Co.,  21  R.  P.  C.  670-1904 669 

Knott  V.  Morgan,  2  Keene,  213-1836 6,  8,  193,  621 

Koehler  v.  Sanders,  122  N.  Y.  65,  4  L.  R.  A.  570,  25  N.  E.  235 193,  230 

Kohler  Mfg.  Co.  v.  Beeshore,  8  C.  C.  A.  215,  59  Fed.  572 415,  080 

Kolley  V.  Robinson,  187  Fed.  415 369 

Kostering  v.  Seattle  Brewing  &  Malting  Co.,  116  Fed.  620-1902  (C.  C.  A.  9th 

Cir.) 267,  587 

Krauas  v.  Jos.  R.  Peebles'  Sons  Co.,  58  Fed.  585-1893  (C.  C.  Ohio) .  .  .385,  676,  678 

Krigbaum  v.  Sbarbaro,  23  Cal.  App.  427  (138  Pac.  364) 303 

Kronthal  Waters,  Ltd.,  v.  Becker,  137  Fed.  649-1905  (C.  C.  E.  D.  Pa.) 253 

Kroppf  V.  Furst,  94  Fed.  150 582 


Labouchere  v.  Dawson,  L.  R.  13  Eq.  Cas.  322-1872 52,  55,  316 

Lalance  &  Grosjean  Mfg.  Co.  v.  National  Enameling  &  Stamping  Co.,  109  Fed. 

317-1901  (C.  C.  S.  D.  N.  Y.) 240 

Lamb  v.  Evans,  3  Ch.  462-1892,  aff'd,  1  Ch.  218-1893,  62  L.  J.  Ch.  404.  .307,  312 


xlvi  Table  of  Cases 

PAGE 

Lamb  Knit  Goods  Co.  v.  Lamb  Glove  &  Mitten  Co.,  120  Mich.  159-1899,  78 

N.  W.  1072,  44  L.  R.  A.  841 183,  621 

Lambert  Pharmacal  Co.  v.  Bolton  Chemical  Corporation,  219  Fed.  325 603 

Lamont,  Corliss  &  Co.  v.  Hershey,  140  Fed.  763-4-1005  (C.  C.  N.  D.  Pa.).  . .  .   619 

Lamont  v.  Leedy,  88  Fed.  72 392,  577 

Lampert  v.  Judge  Co.,  238  Mo.  409-1914,  141  S.  W.  1095 712,  735 

Landespriv  v.  Hall  &  Ruckel,  36  App.  D.  C.  532 436 

Landreth  v.  Landrcth,  22  Fed.  41-1884  (C.  C.  Wis.) 138,  152 

Lane  v.  Brothers  and  Sisters  of  the  Evening  Star  Society,  120  Ga.  355-1904, 

47  S.  E.  951 164 

Lang  V.  Green  River  Distilling  Co.,  33  App.  D.  C.  506 435 

Lar6  et  al.  v.  Harper  Bros.  3d  Cir.,  March,  1898,  86  Fed.  481,  30  C.  C.  A. 

373 520 

La  Republique  Francaise  v.  Schultz,  102  Fed.  153-1900  (C.  C.  A.  2d  Cir.) 703 

La  Societe  Anonyme  des  Anciens  Etablissements,   Panhard  et  Levassor  v. 

Panhard-Levassor  Motor  Co.,  18  R.  C.  P.  405-1901 180 

Lauferty  v.  Wheeler,  11  Abbott's  N.  C.  220 394 

Lawrence  v.  P.  E.  Sharpless  Co.,  203  Fed.  762 422 

Lawrence  Mfg.  Co.  v.  Lowell  Hosiery  Mills,  129  Mass.  325-1880 105,  408 

Lawrence  Mfg.  Co.  v.  Tennessee  Mfg.  Co.,  138  U.  S.  537-1890,  34  L.  ed.  997, 

11  Sup.  Ct.  396 68,  104,  202,  227,  279,  407,  610,  618,  619 

Layton  Pure  Food  Co.  v.  Church  &  Dwight  Co.,  182  Fed.  24  (C.  C.  A.  8th  Ct.) .  .414, 

420,  421,  578,  683,  697,  699 

Lea  V.  Deakin,  Fed.  Cas.  8,  154-1879 220 

Leach  v.  Scarff,  188  Fed.  446 393 

Leacher  v.  Levy,  23  R.  P.  C.  117 563 

Leahy,  Kelly  &  Leahy  v.  Glover,  10  R.  P.  C.  141-1891 669 

Leather  Cloth  Co.  v.  American  Leather  Co.,  11  Jur.  N,  S.  513-1865,  4  De  G. 

J.  &  S.  137-1863,  aff'd,  11  H.  L.  Cas.  523-1865.  .22,  23,  25,  63,  212,  481, 

676,  682,  688 

Lee  v.  Haley,  L.  R.  5  Ch.  App.  Cas.  155-1869 87,  94,  147,  192,  193,  596,  621 

Legal  Aid  Society  v.  Wage  Earners'  Legal  Aid  Assn.,  N.  Y.  L.  J.,  April  21, 

1908,  Dowling,  J 168 

Leggott  V.  Barrett,  15  Ch.  Div.  306-1880 52 

Leidersdorf  v.  Flint,  50  Wis.  400-1880,  7  N.  W.  252 577,  586 

Le  Massena  v.  Storm,  62  App.  Div.  (N.  Y.)  150-1901,  70  N.  Y.  Supp.  882.  .478, 

497,  499 

Leonard  v.  Wells,  L.  R.  26  Ch.  Div.  288 397 

Leonard  v.  White's  G.  L.  Co.,  38  Fed.  922 397 

LePage  Co.  v.  Russian  Cement  Co.,  2  C.  C.  A.  555,  51  Fed.  941-1892,  17  L.  R. 

A.  354 50,  101,  286 

Lepow  v.  Kottler,  115  App.  Div.  (N.  Y.)  231-1906,  100  N.  Y.  Supp.  779 59 

Leschen  &  Sons  Rope  Co.  v.  Broderick  &  Bascom  Rope  Co.,  201  U.  S.  166- 

1906,  30  L.  ed.  710,  26  Sup.  Ct.  425,  aff'g  134  Fed.  571-1904,  67  C.  C.  A. 

418 .292,  636 

Lever  v.  Goodwin,  4  Rep.  Pat.  Cas.  492-1887 724 

Lever  v.  Goodwin,  36  Ch.  Div.  1-1887 665,  667 

Lever  Bros.  v.  Pasfield,  88  Fed.  484 581 

Levering  Coffee  Co.  v.  Merchants'  Cofifee  Co.,  39  App.  D.  C.  151 414,  696 

Levy  V.  Uri,  31  App.  D.  C.  441 437 

Levy  V.  Walker,  L.  R.  10  Ch.  Div.  436-1879 22,  88,  109 


Table  of  Cases  xlvii 

PAGE 

Lewis  V.  Bloede,  202  Fed.  7  (C.  C.  A.) 361,  363 

Lewis  V.  Langdon,  7  Simons,  421-1835 60 

Liebig's  Extract  of  Meat  Co.  v.  Chemists  Co-operative  Society,  13  R.  P.  C.  635 .  583, 

601 
Liebig's  Extract  of  Meat  Co.,  Ltd.,  v.  Libby,  McNeill  &  Libby,  103  Fed.  87-1900 

(C.  C.  N.  D.  111.) 144,  269 

Liebig's  Extract  of  Meat  Co.  v.  Liebig's  Extract  Co.,  180  Fed.  688  (C.  C.  A.) .  145, 

403 

Liebig's  Extract  of  Meat  Co.,  Ltd.,  v.  Walker,  115  Fed.  822-1902 144,  721 

Life  Association  of  America  v.  Boogher,  3  Mo.  App.  173-1876 482 

Liggett  &  Myer  Tobacco  Co.  v.  Finzer,  128  U.  S.  182 583 

Liggett  &  Myer  Tobacco  Co.  v.  Hynes,  20  Fed.  883-1884  (D.  C.  Ark.). . .  .581,  662 

Link  V.  Architectural  Iron  Works,  24  111.  551-1860 182 

Linoleum  Manufacturing  Co.  v.  Nairn,  7  Ch.  Div.  834-1878 82 

Lippman  v.  Martin,  5  Ohio  N.  P.  120,  8  Ohio  Dec.  485-1898 110 

Listman  Mill  Co.  v.  Wm.  Listman  Milling  Co.,  88  Wis.  334-1894,  60  N.  W. 

261 41,  61,  398 

Little  V.  Callus  et  al,  4  App.  Div.  (N.  Y.)  569-74-1896,  38  N.  Y.  Supp.  487.  .305, 

307 

Little  V.  Kellam,  100  Fed.  353-1900  (C.  C.  N.  D.  N.  Y.) 97,  721 

Lloyd  Sabaudo  v.  Cubicciotti,  159  Fed.  191-1908  (C.  C.  Pa.) 369 

London  &  Northern  Bank  v.  Newnes,  16  Times  L.  R.  76-1899 505 

London  Guarantee,  etc.,  Co.  v.  Horn,  206  111.  493-1906 354 

Longenecker  v.  Longenecker  Bros.,  140  N.  Y.  Supp.  403 572,  575 

Loog  V.  Bean,  L.  R.  26  Ch.  Div.  306-1884 483,  484 

Loonen  v.  Deitsch,  189  Fed.  487-1911  (C.  C.  N.  Y.) 382,  385,  395,  397,  417 

Lorillard  Co.  v.  Peper,  86  Fed.  956-1898  (C.  C.  A.  8th  Cir.) 160,  584 

Lorillard  v.  Wight,  15  Fed.  383-1883  (C.  C.  Md.) 249 

Los  Angeles  Creamery  Co.  v.  J.  R.  Newberry  Co.,  21  Cal.  App.  567,  132  Pac. 

289 400,  577 

Lothrop  Pub.  Co.  v.  Lothrop  L.  &  S.  Co.,  191  Mass.  353 572 

Loven  v.  The  People,  158  111.  159-1895 319 

Low  V.  Fels,  35  Fed.  361-1888  (C.  C.  E.  D.  Pa.) 704,  733 

Ludington  Novelty  Co.  v.  Leonard,  127  Fed.  155-1903  (C.  C.  A.  2d  Cir.)  aff'g 

119  Fed.  937 394,  720,  722 

Ludlow  Valve  Mfg.  Co.  v.  Pittsburgh  Mfg.  Co.,  166  Fed.  26  (C.  C.  A.) 405 

Lumley  v.  Gye,  2  El.  &  Bl.  216-1853 327,  336,  337,  338,  340,  342,  353 

Luyties  Bros.  v.  E.  Zimmernam  &  Co.,  149  A.  D.  (N.  Y.)  542 269 

Lynn,  W.  R.,  Shoe  Co.  v.  Auburn-Lynn  Shoe  Co.,  103  Me.  334,  69  Atl.  569.  .719, 

728,  732 
Lynn,  W.  R.,  Shoe  Co.  v.  Auburn  Lynn  Shoe  Co.,  100  Maine,  461,  62  Atl.  499 

(4  L.  R.  A.  N.  S.  460) 402,  719,  722,  727 

M 

Macauley  Bros.  v.  Tierney,  19  R.  I.  255-1895 366 

Mack  v.  Better,  L.  R.  14  Eq.  431-33-1872 526 

MacMahan  Pharmacal  Co.  v.  Denver  Chemical  Mfg.  Co.,  113  Fed.  468,  51  C. 

C.  A.  302-1901 46,  377 

Magee  Furnace  Co.  v.  Le  Baron,  127  Mass.  115-1879 286 

Magnolia  Metal  Co.  v.  Price,  65  App.  Div.  276 305 


xlviii  Table  of  Cases 

PAGE 

Magnolia  Metal  Co.  v.  Tandem  Smelting  Syndicate,  Ltd.,  15  R.  P.  C.  701- 

1898 93 

Mahler  v.  Sanche,  223  111.  13t3-l<)00,  79  N.  E.  9,  rev'g  121  111.  App.  247 304 

Major  Brothers  v.  Franklin  &  Son,  25  R(!p.  Pat.  Cases,  40G-1908 381 

Manhattan  Hudson  Co.  v.  Wood,  Fed.  Cases  9026 696 

Manhattan  Medicine  Co.  v.  Wood,  108  U.  S.  218-1882,  27  L.  ed.  706,  2  Sup. 

Ct.  436  Fed.  Ciis.  9026 218,  676,  681 

Manitowoc  Pea  Packing  Co.  v.  Numsen  &  Sons,  93  Fed.  196-1899  (C.  C.  A. 

7th  Cir.) 580 

Mann  v.  Brown,  43  App.  D.  C.  457 454 

Manufacturing  Co.  v.  Trainer,  101  U.  S.  55,  25  L.  ed.  993 104,  193,  601,  640 

Mappin  &  Webb,  Ltd.,  v.  Lcapman,  22  R.  P.  C.  398-1905  (Ch.  Div.) 37 

Marcus  Ward  v.  Ward,  40  N.  Y.  St.  Rep.  792,  15  N.  Y.  Supp.  913 104 

Mark  Cross  Co.,  In  re,  26  App.  D.  C.  101 465 

"Mark  Twain"  case,  14  Fed.  Rep.  728 543,  544 

Marhn  Fire  Arms  Co.  v.  Shiekls,  171  N.  Y.  384-1902,  64  N.  E.  163,  59  L.  R. 

A.  310 168,  483,  490,  496,  498 

Marsh  v.  Billings,  7  Cush.  322-1851,  61  Mass.  322-1851 84,  114,  367 

Marshall  v.  Pinkham,  52  Wis.  572-1881,  9  N.  W.  615 64,  158 

Marshall  v.  Ross,  L.  R.  8  Eq.  651-1869 689 

Martens  v.  Reilly,  109  Wis.  464-1901,  84  N.  W.  840 348 

Martin  v.  Martin  &  Bowne  Co.,  27  App.  D.  C.  59 450 

Martin  v.  Martin,  75  N.  J.  Eq.  257 712 

Martin  v.  Martin,  71  All.  409 172 

Martin  Co.,  L.  v.  L.  Martin  &  Wilckes  Co.,  75  N.  J.  Eq.  39-50 137 

Martin  v.  Wright,  6  Sim.  297-1833 480 

Marvel  Co.  v.  Fuller  Co.,  125  Fed.  829-1903  (C.  C.  N.  Y.) 276 

Marvel  Co.  v.  Pearl,  133  Fed.  160-1904  (C.  C.  A.  2d  Cir.) 89,  591,  592 

Marx  &  H.  J.  Clothing  Co.  v.  Watson,  168  Mo.  133-1901,  67  S.  W.  391,  56  L. 

R.  A.  951 491 

Massachusetts  &  Baltimore  Car  Wheel  Co.  v.  Bemis,  29  Fed.  95-1886  (C.  C. 

Mass.) 484 

Massam  v.  Thorley's  Cattle  Food  Co.,  14  Ch.  Div.  748-1880 122,  177 

Mathy  v.  Republic  Metalware  Co.,  35  App.  D.  C.  151 452,  453,  463 

Matsell  v.  Flanagan,  2  Abb.  Pr.  N.  S.  (N.  Y.)  459-1867 172,  539,  621,  639 

Mauger  v.  Dick,  55  How.  Pr.  132-1878 482,  499 

Maxwell  v.  Hogg,  L.  R.  2  Ch.  App.  307-18G7 481,  527,  528 

May  v.  Thompson,  20  Ch.  Div.  718 33 

May  v.  Wood,  172  Ma.ss.  11-1S9S,  51  N.  E.  191 335 

Mayer  v.  Journeymen  Stonecutters'  Assn.,  47  N.  J.  Eq.  519-1890,  20  Atl.  492. .  499 

Mayer  Fertilizer  &  Junk  Co.  v.  V.  C.  Chemical  Co.,  35  App.  D.  C.  425 414 

Mayer  F.  &  J.  Co.  v.  Virginia-Carolina  C.  Co.,  35  App.  D.  C.  425 414,  455 

Mayor  of  Bradford  v.  Pickles,  64  L.  J.  Ch.  101-1895 329 

McAllister  v.  Stumpp  &  Walter  Co.,  25  Misc.  (N.  Y.)  438-1898 551 

McAndrew  v.  Bassett,  4  De  G.  J.  fe  S.  380-1864 208,  412,  620 

McAndrew  v.  Ba.ssett,  10  Jur.  N.  S.  492 402 

McBride  v.  O'Neal,  128  Ga.  473-1907,  57  S.  E.  789,  Miss.  Code  1892,  §  1068, 

Code  of  1906,  §  1146 340 

McCann  v.  Anthony,  21  Mo.  App.  83-1886 272,  614,  621 

McCann  v.  Wolff,  28  Mo.  App.  447-1888 335 

McCardel  v.  Peck,  28  How.  Pr.  (N.  Y.)  120-1864 701 


Table  of  Cases  xlix 

PAGE 

McCarter  v.  Baltimore  Chamber  of  Commerce,  126  Md.  131-1915 349 

McCartney  v.  Garnhart,  45  Mo.  593-1870 103 

McCaw,  Stevenson  &  Orr,  Ltd.,  v.  Lee  Bros.,  23  R.  P.  C.  1-1905  (Ch.  Div.).  .   699 
McDonald  &  Morrison  Mfg.  Co.  v.  MueUer  Mfg.  Co.,  183  Fed.  972-1910  (C.  C. 

A.  8th  Cir.) 278,  583 

McFell  Electric  &  Telephone  Co.  v.  McFeU  Electric  Co.,  110  111.  App.  182- 

1903 51,  HI 

McGraw  Tire  &  Rubber  Co.  v.  Griffith,  198  Fed.  566 413 

Mcllhenny's  Sons  v.  New  Iberia  Co.,  30  App.  D.  C.  337 450,  457 

Mcllhenny  v.  New  Iberia  E.  of  T.  P.  Co.,  34  App.  D.  C.  430 400,  457 

McKee  v.  Hughes,  133  Tenn.  455,  181  S.  W.  930-1916 366 

McLean  Co.  v.  Adams  Mfg.  Co.,  31  App.  D.  C.  509.  . 436 

McLean  v.  Fleming,  96  U.  S.  245-1877,  24  L.  ed.  828.  .20,  23,  40,  94,  117,  191, 

408,  584,  586,  617,  618,  625,  631,  721,  732,  733 

McLennan  v.  Church,  163  Wis.  411,  158  N.  W.  73-1916 351 

McVey  v.  Brendel,  144  Pa.  St.  235-1891,  22  Atl.  912,  13  L.  R.  A.  377 672 

Mealey  v.  Bemidji  Lumber  Co.,  118  Minn.  427-1912 339 

Meccano  v.  Wagner,  234  Fed.  912-1916 242,  555 

Melachrino,  M.,  &  Co.  v.  Melachrino  Egyptian  Cigarette  Co.,  4  R.  P.  C.  215- 

1887 82 

Meldrum  v.  Shubert,  2  111.  Cir.  Ct.  Rep.  293-1904 621 

Millwood  Distillery  Co.  v.  Harper,  167  Fed.  389 269 

Memphis  Keeley  Institute  v.  Leslie  E.  Keeley  Co.,  155  Fed.  964-1907  (C.  C.  A.)  .578, 

675 

Meneely  v.  Meneely,  62  N.  Y.  427-1875 88,  110,  124 

Menendez  v.  Holt,  128  U.  S.  514-1888,  32  L.  ed.  526,  9  Sup.  Ct.  143.  .34,  61,  415, 

467,  701,  710,  732,  733 
Merchant  Banking  Co.  v.  Merchants'  Joint  Stock  Bank,  9  Ch.  Div.  560-1878. .  188 
Merchants'  Detective  Assn.  v.  Detective  Mercantile  Agency,  25  111.  App.  250- 

1888 Ill,  162,  170 

Merchants'  S.  C.  Co.  v.  Retailers'  Co.,  206  Fed.  545 320 

Merriam  v.  Famous  Shoe  &  Clothing  Co.,  47  Fed.  411-1891  (C.  C.  E.  D.  Mo.)  .291, 

525 

Merriam  v.  HoUoway  Pub.  Co.,  43  Fed.  450 525,  575,  577 

Merriam,  G.  &  C,  Co.  v.  Ogilvie,  159  Fed.  638-1908  (C.  C.  A.  Ist  Cir.),  modify- 
ing 149  Fed.  858 290,  291,  524 

Merriam  v.  Ogilvie,  170  Fed.  167 721 

Merriam  v.  Saalfield,  198  Fed.  369 69,  390,  405,  713,  716,  722,  726 

Merriam,  G.  &  C,  Co.  v.  Straus,  136  Fed.  477-1904  (C.  C.  S.  D.  N.  Y.).  .514,  515, 

527 
Merriam  v.  Texas  Sif  tings  Pub.  Co.,  49  Fed.  944-1892  (C.  C.  S.  D.  N.  Y.) .  .291,  525 
Merriam  Co.  v.  Syndicate  Pubhshing  Co.,  207  Fed.  515,  237  U.  S.  618-621 

461,  525 

Merry  v.  Hoopes,  111  N.  Y.  415-1888,  18  N.  E.  714 41,  59,  61 

Merryweather  v.  Moore,  2  Ch.  518-1892 305 

Messerole  v.  Tynberg,  4  Abb.  Pr.  N.  S.  410-1868 224 

Metcalf  V.  Hanover  Star  MiUing  Co.,  204  Fed.  211  (C.  C.  A.  5th  Cir.)  240 

U.  S.  403  (1915) 388,  397,  417,  419,  696,  699 

Metcalfe  v.  Brand,  86  Ky.  331-1887,  5  S.  W.  773 228 

Metropolitan,  etc.,  Co.  v.  Metropolitan,  etc.,  Co.,  156  A.  D.  577  (N.  Y.),  May, 

1913 163,  169 


1  Table  of  Cases 

PAGE 

Metropolitan  Nat.  Bank  v.  St.  Louis  Dispatch  Co.,  36  Fed.  722-1888  (C.  C. 

Mo.) 32 

Metzler  v.  Wood,  8  Ch.  Div.  606-1878 526 

Meyer  v.  Dr.  Bull  Vegetable  Medicine  Co.,  58  Fed.  884-1893  (C.  C.  A.  7th 

Cir.) 590,  649 

Meyer  Bros.  Coffee  &  Spice  Co.,  In  re,  35  App.  D.  C.  351 439 

MiehiRan  Condensed  Milk  Co.  v.  KenncwcR  Co.,  30  App.  D.  C.  491 .  .410,  453,  697 

Michigan  SavinRs  Bank  v.  Dime  Savings  Bank,  162  Mich.  297 002 

Millar  v.  Taylor,  4  Burrows,  2303 509 

Miller,  The  Mrs.  G.  B.,  &  Co.  Tobacco  M'f'y  v.  Commerce,  45  N.  J.  L.  18- 

1883 95,  609,  617 

MillinRton  V.  Fox,  3  My.  &  Cr.  338-1838.  .  .8,  19,  25,  26,  81,  611,  612,  613,  614, 

732 

MiskeU  v.  Prokop,  58  Neb.  628-1899,  79  N.  W.  522 598 

Missouri,  K.  &  T.  Ry.  Co.  v.  McCrary,  182  Fed.  401 343 

Mitchcl  V.  Reynolds,  1  P.  Wms.  181;  1  Smith  Lead.  Cas.  Pt.  II,  508 297,  298 

Mitchell  V.  Henry,  15  Ch.  Div.  181-1880 426,  663 

Mitchell  V.  Williams,  106  Fed.  168-1901  (C.  C.  A.  7th  Cir.) 651 

Modesto  Creamery  v.  Stanilaus  Creamery  Co.,  168  CaHf.  289-1914,  142  Pac. 

845 716,  727 

Moebries  v.  Louis  Dejonge  &  Co.,  215  Fed.  443-1914  (D.  C.  S.  D.  N.  Y.) .  .  .  .   606 

Meet  v.  Pickering,  6  Ch.  Div.  770,  47  L.  J.  Ch.  527 407 

Mogul  SS.  Co.  v.  McGregor,  Gow  &  Co.,  App.  Cas.  25-1892,  L.  R.  23  Q.  B.  598- 

1889 12,  13,  323,  333,  336,  364 

Moller  v.  Lambert,  2  Campb.  548 114 

Monopol  Tobacco  Works  v.  Gensior,  32  Misc.  (N.  Y.)  87-1900,  66  N.  Y.  Supp. 

155 237 

Montegut  v.  Hickson,  Inc.  N.  Y.  Law  Journal,  May  18,  1917  (N.  Y.)  App.  Div. 

16,  552 

Montgomery  v.  Thompson  (1891),  A.  C.  217,  64  L.  T.  R.  748 139,  197 

Montgomery  Ward  Co.  v.  South  Dakota,  etc.,  Assn.,  150  Fed.  413 486 

Moore,  Matter  of,  97  Misc.  (N.  Y.)  240 65 

Moore  v.  Rawson,  185  Mass.  264-1904 60 

Moore,  Benjamin,  &  Co.  v.  Anwell,  158  Fed.  462-1908  (C.  C.  E.  D.  N.  Y.) .  .  . .   641 

Moorman  v.  Hoge,  2  Sawy.  78-1871  (C.  C.  Cal.) 594 

Moran  v.  Dunphy,  177  Mass.  485 337,  340,  349,  354 

Morassc  v.  Brochu,  151  Mass.  567 340 

Morgan  v.  Andrews,  107  Mich.  33 337,  364 

Morgan  Envelope  Co.  v.  Walton,  86  Fed.  605 400 

Morgan's,  Enoch,  Sons  Co.  v.  Edler,  Cox's  Manual,  714-1890 99 

Morgan's  Sons  Co.  v.  Troxell  (rev'g  23  Hun,  632-1881),  89  N.  Y.  292-1882,  42 

Am.  Rep.  294 241,  586 

Morgan's  Sons  Co.  v.  Troxell,  23  Hun  (N.  Y.),  632-1881 588 

Morgan's  Sons,  Enoch,  Co.  v.  Whittier-Coburn  Co.,  118  Fed.  657-1902  (C.  C. 

N.  D.  Cal.) 267 

Morison  v.  Moat,  20  L.  J.  N.  S.  Ch.  513-1851,  affirmed  on  appeal,  21  L.  J.  N.  S. 

Ch.  248,  9  Hare,  241-1851 296,  300,  304,  305 

Morris  v.  Altstedtcr,  156  N.  Y.  Supp.  1103-1916 637 

Morrall,  Abel,  Ltd.,  v.  Hessin  &  Co.,  20  R.  P.  C.  42^^1903  (Ct.  App.) 36 

Morse  v.  Hall,  109  Ma.ss.  409 638 

Morton  v.  Morton,  148  Cal.  142-1905,  82  Pac.  664,  1  L.  R.  A.  N.  S.  660n 147 


Table  of  Cases  li 

PAGE 

Mossier  v.  Jacobs,  66  111.  App.  571-1896. 98,  597,  670 

Motion  Picture  Patents  Co.  v.  Eclair  Film  Co.,  208  Fed.  416 : 571 

Motley,  Green  &  Co.  v.  Detroit  S.  &  S.  Co.,  161  Fed.  389-1908 350 

Motz  Tire  Co.,  In  re,  40  App.  D.  C.  487 439 

Mouson  &  Co.  V.  Boehm,  L.  R.  26  Ch.  Div.  398-1884 698 

Moxie  Co.  V.  Daoust,  206  Fed.  434-1913,  (C.  C.  A.  1st  Cir.) 239,  252 

Moxie  Nerve  Food  Co.  v.  Baumbach,  32  Fed.  205-1887  (C.  C.  E.  D.  Tex.). ...  268 

Moxie  Nerve  Food  Co.  v.  Holland,  141  Fed.  202-1905  (C.  C.  R.  I.) 680 

Moxie  Nerve  Food  Co.  v.  Modox  Co.,  152  Fed.  493-1907  (C.  C.  R.  I.),  153 

Fed.  487-1907  (C.  C.  R.  I.) 673,  678,  679,  694 

Moxley  Co.  v.  Braun  &  Fitts  Co.,  93  lU.  App.  183-1900 271,  379,  380,  692 

Mueller  Mfg.  Co.  v.  McDonald  &  Mooson  Mfg.  Co.,  164  Fed.  1001-1909. .  247,  277 

Mulkern  v.  Ward,  L.  R.  13  Eq.  619-1872 474,  481 

Munden  v.  Harris,  153  Mo.  652,  134  S.  W.  1076 168 

Munro  v.  Tousey,  129  N.  Y.  38-1891,  29  N.  E.  9,  14  L.  R.  A.  245n.  .521,  538,  583 

Muralo  Co.  v.  National  Lead  Co.,  36  App.  D.  C.  541 437 

Mutual  Milk  &  Cream  Co.  v.  Heldt,  120  App.  Div.  (N.  Y.)  795 305 

Mutual  Milk  &  Cream  Co.  v.  Prigge,  112  App.  Div.  (N.  Y.)  652 305 

Myers  v.  Kalamazoo  Buggy  Co.,  54  Mich.  215,  20  N.  W.  545,  52  Am.  Rep. 

811 41,  55,  317 

Myers  v.  TheUer,  38  Fed.  607-1889  (C.  C.  S.  D.  N.  Y.) 268 

N 

Nash  Hardware  Co.,  In  re,  33  App.  D.  C.  221 435,  453 

NashviUe,  C.  &  St.  L.  Ry.  Co.  v.  McConnell,  82  Fed.  65-1897  (C.  C.  Tenn.) .  344,  553 

Nashville  Syrup  Co.  v.  Coca  Cola,  215  Fed.  527 444,  446,  448 

Nathan  Manufacturing  Co.  v.  H.  A.  Rogers  Co.,  N.  Y.  Law  Jour.,  February 

27,  1909 283 

National  Biscuit  Co.  v.  Baker,  95  Fed.  135  (C.  C.  S.  D.),  1899 397,  601 

National  Biscuit  Co.  v.  Pacific  Coast  Biscuit  Co.,  83  N.  J.  Eq.  368-1914 251 

National  Candy  Co.,  In  re,  35  App.  D.  C.  351 440 

National  Carbon  Co.  v.  Bright  Star  Battery  Co.,  4  Trade  Mark  Reg.  346 ..  .  408 

National  Distilling  Co.  v.  Century  Liquor  &  Cigar  Co.,  183  Fed.  206 403 

National  Folding  Box  and  Paper  Co.  v.  National  Folding  Box  Co.,  43  Wkly. 

Repr.  156 189 

National  Gum  &  Mica  Co.  v.  Braendly,  27  App.  Div.  (N.  Y.)  219,  51  N.  Y. 

Supp.  93,  22  Cyc.  867 305,  306 

National  Life  Ins.  Co.  v.  Myers,  140  111.  App.  392-1908 488 

National  Lock  Washer  Co.  v.  Hobbs  Mfg.  Co.,  210  Fed.  516 448 

National  Phonograph  Co.,  In  re,  29  App.  D.  C.  142 438,  439 

National  Phonograph  Co.,  Ltd.,  v.  Edison  Bell,  etc.,  Co.,  1  Ch.  335-1908. .  337,  356 
National  Phonograph  Co.,  Ltd.,  v.  Edison-Bell  Consol'd  Phonograph  Co.,  Ltd., 

24  T.  L.  R.  201-1907 356 

National  Protective  Association  v.  Cuming,  170  N.  Y.  315 353 

National  Telegraph  News  Co.  v.  Western  Union  Telegraph  Co.,  119  Fed.  294- 

1902  (C.  C.  A.  7th  Cir.),  60  L.  R.  A.  805 342,  553 

National  Starch  Mfg.  Co.  v.  Duryea,  101  Fed.  117-1900  (C.  C.  A.  2nd  Cir.).. .   154 

National  Starch  Co.  v.  Koster,  146  Fed.  259 642 

National  Water  Co.  v.  Hertz,  177  Fed.  607 253 

Natural  Food  Co.  v.  Williams,  30  App.  D.  C.  348 447 


lii  Table  of  Cases 

PAGE 

Nelson  v.  J.  M.  WinchcU  &  Co.,  203  Mass.  75,  89  N.  E.  180,  23  L.  R.  A.  (U.  S.) 

1150 409,  730,  732,  734 

Ncsne  v.  Suudct,  101  N.  W.  490-1904,  93  Minn.  299 77,  181,  620 

Neth  V.  Ohnicr,  30  App.  D.  C.  478-1908 310 

Newark  Coal  Co.  v.  Spangler,  54  N.  J.  Eq.  354-1896,  34  Atl.  932 88,  110,  317 

Newbro  v.  Undeland,  69  Neb.  821-1903,  96  N.  W.  635 681 

Newby  v.  Oregon  Cent.  Ry.  Co.,  1  Deady,  609-1869,  Fed.  Cas.  No.  10,144.  .163, 

170,  181,  182,  616,  621,  622 
Newcomer  &  Lewis  v.  Scriven  Co.,  118  Fed.  621-1909  (C.  C.  A.  6th  Cir.) .  .292,  392 
New  England  Awl  &  Needle  Co.  v.  Marlborough  Awl  &  Needle  Co.,  168  Mass. 

154-1897,  46  N.  E.  386 240,  593,  620,  629 

Newman  v.  Alvord,  49  Barb.  588-1867,  aff'd,  51  N.  Y.  189-1872.  .  192,  193,  213, 

225,  229,  230 

Newman  v.  Pinto,  4  R.  P.  C.  508-1887  (Ct.  App.) 683 

New  Orleans  Coffee  Co.  v.  American  Coffee  Co.  of  New  Orleans,  124  La.  19- 

1909 251 

N.  Y.  &  N.  J.  Lubricant  Co.  v.  O.  W.  Young,  etc.,  77  N.  J.  Eq.  221 396,  679 

N.  Y.  Asb.  Mfg.  Co.  V.  Ambler,  etc.,  Co.,  102  Fed.  890 642 

N.  Y.  Asbestos  Mfg.  Co.  v.  Ambler  Asb.  Air-Ceil  Cov'g  Co.,  99  Fed.  85 642 

N.  Y.  Cab  Co.  v.  Mooney,  15  Abbott's  N.  C.  152-1884 258 

N.  Y.  C.  &  H.  R.  R.  Co.  V.  Reeves,  85  N.  Y.  Supp.  28-1903 344 

New  York  Filter  Co.  v.  Schwarzwalder,  58  Fed.  579 492 

New  York  &  Rosendale  Cement  Co.  v.  Coplay  Cement  Co.,  44  Fed.  277-1890 

(C.  C.  A.),  10  L.  R.  A.  833,  45  Fed.  212-1891 200,  618 

New  York  Herald  Co.  v.  Star  Co.,  146  Fed.  204,  aff'd  146  Fed.  1023 541 

New  York  Mackintosh  v.  Flam,  198  Fed.  571 448 

Nicholson,  J.  &  W.,  &  Co.  v.  Buchanan,  19  R.  P.  C.  321-1900 44,  76,  83 

Noel  V.  ElUs,  89  Fed.  978-1896  (C.  C.  S.  D.  Iowa) 96 

Noice  V.  Brown,  39  N.  J.  L.  569 342 

Nokes  V.  Mueller,  72  111.  App.  431 257 

Nolin  V.  Pearson,  191  Mass.  283-1906 337 

Nordenfelt  v.  The  Maxim-Nordenfelt  Guns  &  Ammunition  Co.,  App.  Cas.  535- 

1894 38 

North  Cheshire  &  Manchester  Brewery  Co.,  The,  Ltd.,  v.  The  Manchester 

Brewery  Co.,  Ltd.,  App.  Cas.  83-1899 177,  178,  615 

Northcutt  V.  Turney,  101  Ky.  314-1897,  41  S.  W.  21 638,  703 

Northwestern  C.  M.  Co.  v.  Mauser  &  Creasman,  162  Fed.  1004 397 

Northwestern  Knitting  Co.  v.  Garon,  112  Minn.  231,  128  N.  W.  288 388,  421 

Notaseme  Hosiery  Co.  v.  Straus,  201  Fed.  99  (C.  C.  A.  2d  Cir.),  209  Fed. 

495-1916 235,  721,  722,  727 

0 

Cakes  v.  St.  Louis  Candy  Co.,  146  Mo.  391-1898 383 

Oakes  v.  Tonsmierre,  4  Woods,  547-1883  (C.  C.  Ala.) 40 

Ogilvie  V.  G.  &  C.  Merriam  Co.,  149  Fed.  860 510,  524 

Ogilvie,  J.  S.,  Pub.  Co.  v.  Royal  Pub.  Co.,  241  Pa.  5,  88  Atl.  316 251 

O'Grady  v.  McDonald,  72  N.  J.  Eq.  805,  66  Atl.  175-1907 85 

Ohio  Baking  Co.  v.  National  Biscuit  Co.,  127  Fed.  116-1904  (C.  C.  A.  6th  Cir.)  264 

Oliver  Plow  Works  v.  Oliver  Mfg.  Co.,  40  App.  D.  C.  125 438 

Oneida  Community  v.  Oneida  Game  Trap  Co.,  168  App.  Div.  (N.  Y.)  769-1915. 163, 
169,  185,  208,  212,  215,  399,  403,  448,  461,  646,  648,  651 


Table  of  Cases  liii 

PAGE 

O'Neill  V.  General  Film  Co.,  171  App.  Div.  (N.  Y.)  854 510,  545 

Oppermann  v.  Waterman,  94  Wis.  583-1896,  69  N.  W.  569 267 

Original  La  Tosca  Social  Club  v.  La  Tosca  Social  Club,  23  App.  D.  C.  96-1904 .   186 

O'Rourke  v.  Central  City  Soap  Co.,  26  Fed.  576 394,  414 

Orr  V.  Home  Mutual  Ins.  Co.,  12  La.  Ann.  255-1857 365 

Orr,  Ewing  &  Co.  v.  Johnston  &  Co.,  L.  R.  13  Ch.  Div.  434-1880. .  .586,  602,  622 

Osgood  V.  Allen,  18  Fed.  Cas.  No.  10,603,  1  Holmes,  185 509,  510,  513,  528 

Ottoman  Cahvey  Co.  v.  Dane,  95  111.  203-1880 166 

Outcault  V.  Lamar,  135  App.  Div.  110 541,  545 

Outcault  V.  New  York  Herald,  146  Fed.  205 541 

Oxypathor  Co.  v.  De  Cordero,  164  App.  Div.  902,  149  N.  Y.  Supp.  513.  .318,  320 


Pacific  Coast  Condensed  Milk  Co.  v.  Frye  &  Co.,  85  Wash.  133-1915  (147  Pac. 

865) 239 

Packham  &  Co.,  Ltd.  v.  Sturgess  &  Co.,  15  R.  P.  C.  669-1898 270 

Paine  &  Co.  v.  Daniel!  &  Sons'  Breweries,  Ltd.,  10  R.  P.  C.  71-1893 92 

Palmer  v.  De  Witt,  47  N.  Y.  532-1872 295,  509,  510,  512,  545 

Palmer  v.  Harris,  60  Pa.  St.  156-1869 18,  682 

Paper  Goods  Co.  v.  Dittgen,  171  Fed.  031  (C.  C.  A.  7th  Cir.) 495 

Paris  Medicine  Co.  v.  W.  H.  Hill  Co.,  102  Fed.  148-1900  (C.  C.  A.  6th  Cir.) . .  385,  678, 

679 
Park,  John  D.,  &  Sons  Co.  v.  Ilartman,  187  Mass.  144-1905,  72  N.  E.  839,  153 

Fed.  24-1907  (C.  C.  A.  6th  Cir.),  12  L.  R.  A.  N.  S.  135,  note.  .64,  296,  298,  299, 

358,  360,  361 

Parkinson,  J.  F.,  Co.  v.  Trades  Council,  154  Cal.  531  (Dec,  1908) 333 

Parkland  Hills  Blue  Lick  Water  Co.  v.  Hawkins,  95  Ky.  502-1894,  26  S.  W.  389,  211, 

381,  402 

Parlett  V.  Guggenheimer,  67  Md.  542-1887, 10  Atl.  81 266 

Parsons  Bros.  &  Co.  v.  Gillespie  &  Co.,  15  R.  P.  C.  57-1897 :..     90 

Partridge  v.  Menck,  2  Sandf.  Ch.  (N.  Y.)  622-1845 88,  110 

Pasley  v.  Freeman,  3  Term  Rep.  51-1789 346 

Pavesich  v.  N.  E.  Life  Ins.  Co.,  122  Ga.  190 168 

Payton  &  Co.  v.  Snelling,  Lampard  &  Co.,  App.  Cas.  308-1901 582,  622 

Payton  &  Co.  v.  Snelling,  Lampard  &  Co.,  Ltd.,  17  R.  P.  C.  48-53-1900 243 

Peabody  v.  Norfolk,  98  Mass.  452-1867,  96  Am.  Dec.  664 295,  296,  300,  301 

Pearson  v.  Pearson,  L.  R.  27  Ch.  Div.  145-1884 52,  55 

Peck  Bros.  &  Co.  v.  Peck  Bros.  Co.,  113  Fed.  291-1902  (C.  C.  A.  7th  Cir.),  51 

C.C.A.251,62L.R.A.81 41,  49,  163,  186 

Peck  v.  Northern  Pac.  Ry.  Co.,  51  Mont.  295, 152  Pac.  421-1915 367 

Peerless  Pattern  Co.  v.  Pictorial  Review  Co.,  147  App.  Div.  (N.  Y.)  715-1911. ...   319 
Penberthy  Injector  Co.  v.  Lee,  120  Mich.  174-1899, 78  N.  W.  1074. .  183,  184, 

654,  655 

Pennell  v.  Lathrop,  191  Mass.  357 575 

Pennsylvania  Iron  Works  Co.  v.  Henry  Voght  Machine  Co.,  29  Ky.  L,  Rep.  861- 

1906, 96  S.  W.  551, 8  L.  R.  A.  N.  S.  1023 497 

Penn.  R.  Co.  v.  Beekman,  30  Wash.  (D.  C.)  Law  Rep.  715-1902 344 

Pennsylvania  Rubber  Co.  v.  Dreadnought  Tire  &  Rubber  Co.,  225  Fed.  138 393 

Pennsylvania  Salt  Mfg.  Co.  v.  Myers,  79  Fed.  87-1897  (C.  C.  E.  D.  Mo.) .  .251,  394, 

397 


liv  Table  of  Cases 

PAGE 

People  V.  Sheldon,  139  N.  Y.  251 322 

People's  Land  &  Mfj;.  Co.  v.  Beyer,  161  Wis.  349, 154  N.  W.  382 366 

Perkins  V.  Apollo  Bros.,  197  Fed.  476 418 

Perkins  v.  Pendleton,  90  Me.  166 354 

Perkins  Electric  Lamp  Co.  v.  Hood,  44  111.  App.  449-1892 182 

Perry  V.  Truefitt,  6  Beav.  66-1842 12,  390,  677 

Pettes  V.  American  Watchman's  Clock  Co.,  89  App.  Div.  (N.  Y.)  345-1903,  85 

N.  Y.  Supp.  900 181 

Pfeiffer  V.  Wilde,  107  Fed.  456-1901 642 

Pflugh  V.  Eagle  White  Lead  Co.,  185  Fed.  769, 771 377,  697,  699 

Phalon&Sonv.  Wright,  5  Phila.  464-1864 678 

Phenix  Cheese  Co.  v.  Cleveland  Cream  Cheese  Co.,  U.  S.  Cir.  Ct.  (Northern  Dist. 

Ohio,  Eastern  Div.),  Feb.  4, 1910 216,  225,  227 

Phenix  Cheese  Co.  v.  Kennedy  et  al.,  U.  S.  Dist.  Ct.  (Eastern  Dist.  of  Pennsyl- 
vania), May  18, 1915 212,  216,  225,  227 

Phenix  Cheese  Co.  v.  Kirp  et  al,  App.  Div.  (N.  Y.)  March,  1917 216,  225,  227 

Philadelphia  Extracting  Co.  v.  Keystone  Extracting  Co.,  176  Fed.  830-1910 

320 
Philadelphia  Novelty  Co.  v.  Blakesley  Novelty  Co.,  37  Fed.  365-1889  (C.  C. 

Conn.) 246 

Philadelphia  Novelty  Mfg.  Co.  v.  Rouss,  40  Fed.  585-1889  (C.  C.  S.  D.  N.  Y.)  273,  594 

Pha?nix  Paint  &  Varnish  Co.  v.  Lewis  &  Bros.,  32  App.  D.  C.  285 437 

Photo  Drama  Motion  Picture  Co.  v.  Social  Uplift  Film  Corp.,  220  Fed.  448 .. .  510, 545 

Pidding  v.  How,  8  Sim.  477-1837 676,  677,  678 

Pierce  V.  Franks,  15  L.  J.  Ch.  N.  S.  122-1846 114 

Piercev.  Guittard,  68Cal.  68-1885,  8 Pac.  645 94,  101 

Pike,  A.  F.,  Mfg.  Co.  v.  Cleveland  Stone  Co.,  35  Fed.  896-1888 213,  401 

Pillsbury  v.  Pillsbury-Washburn  Flour  MiUs  Co.,  64  Fed.  841-1894  (C.  C.  A.  7th 

Cir.),  24  U.  S.  App.  395 146,  589,  662 

Pillsbury-Washburn  Flour  Mills  Co.,  Ltd.,  v.  Eagle,  86  Fed.  608-1898,  30  C.  C. 

A.  386,  41  L.  R.  A.  162,  rev'g  82  Fed.  816-1897 202,  209,  223,  229 

Pinet,  F.,  et  Cie  v.  Madison  Louis  Pinet,  Ltd.,  15  R.  P.  C.  65-1897;  see  also  s.  c. 

14  R.  P.  C.  933-1897 138,  151 

Plant,  Thomas  G.,  v.  May  Mercantile  Co.,  153  Fed.  229 398,  654 

Plant  V.  Woods,  176  Mass.  492-1900,  57  N.  E.  1011,  51  L.  R.  A.  339.  .334,  340,  346, 

487 

Plant  Seed  Co.  v.  Michel  Plant  &  Seed  Co.,  23  Mo.  App.  579-1889 102,  182,  576 

Planten  v.  Gedney,  221  Fed.  281, 224  Fed.  382 427,  457,  459 

Planten  V.  Pharmacy  Co.,  33  App.  C.  D.268 439 

Plotzker  V.  Lucas,  24  R.  P.  C.  551-1907 687 

Polar  Knitting  Mills,  ^^x  parte,  154  Off.  Gaz.  251 ". 438 

PoUard  v.  Photographic  Co.,  40  Ch.  Div.  345-1889 295 

Pomeroy  Ink  Co.  v.  Pomeroy,  77  N.  J.  Eq.  293, 1910 320 

Pope  v.  McCrum-Howell,  191  Fed.  979-1911  (C.  C.  A.  7th  Cir.) 277 

Popham  V.  Cole,  66  N.  Y.  69-1876, 23  Am.  Rep.  22 686 

PostalTel.  Cable  Co.  v.  Netter,  102  Fed.  691 642 

Postum  Cereal  Co.  v.  American  Hedlth  Food  Co.,  119  Fed.  848-1902  (C.  C.  A. 

7th  Cir.),  56  C.  C.  A.  360 98,  270,  625 

Potter  V.  McPherson,  21  Hun  (N.  Y.),  559-1880 98,  518,  526 

Potter  Drug  &  Chemical  Co.  v.  Miller,  75  Fed.  656 397 

Potter  Drug  &  Chemical  Corp.  v.  Pasfield  ooap  Co.,  102  Fed.  490-1900,  aff'd ....     98 


Table  of  Cases  Iv 

PAGE 

Powell  V.  Birmingham  Vinegar  Brewery  Co.,  2  Ch.  54-1896,  L.  11.  App.  Cas.  710- 

1897 20,  81,  142,  263,  664,  709 

Pratt's  Appeal,  117  Pa.  St.  401-1888, 11  Atl.  878 615,  616 

Pres-O-Lite  Co.  v.  Davis,  209  Fed.  917,  215  Fed.  349, 131  C.  C.  A.  491 554,  556 

Press  Pub.  Co.  v.  Levi  Bros.  &  Co.,  N.  Y.  Law  Journal,  Dec.  20, 1912 558 

Prince  Albert  V.  Strange,  1  Hall.  &T.  1-1849,  p.  24 311 

Prince  Mfg.  Co.  v.  Prince's  Metallic  Paint  Co.,  135  N.  Y.  24-1892,  31  N.  E.  990, 

17  L.  R.  A.  129 661,  676 

Prince's  Metallic  Paint  Co.  v.  Prince  Mfg.  Co.,  57  Fed.  938-1893  (C.  C.  A.  3d 

Cir.) 710 

Prince  de  Wagram  v.  Marais,  Cour  de  Paris,  Dec.  2, 1871,  Dalloz,  2, 185 327 

Probasco  v.  Bouyon,  1  Mo.  App.  241-1876 40 

Proctor  &  Gamble  Co.  v.  Globe  Refining  Co.,  92  Fed.  357-1899  (C.  C.  A.  6th  Cir.)  260, 

269 
Prudential  Assurance  Co.  v.  Knott,  L.  R.  10  Ch.  App.  Cas.  142-1875. .  .474,  482,  484 

Punch  v.  Boyd,  L.  R.  Ir.  16  Q.  B.  D.  476-1885 505 

Punnett,  Ex  parte,  16  Ch.  Div.  226-1880 33 

Putnam  Nail  Co.  v.  Bennett,  43  Fed.  800-1890 227,  279,  280,  576,  618 

Putnam  Nail  Co.  v.  Dulaney,  140  Pa.  St.  205-1891, 21  Atl.  391, 11  L.  R.  A.  524. .  279 

Q 
Quinn  V.  Leathem,  App.  Cas.  495-1901 327,  328,  336,  337,  338,  354,  355,  357 

R 

Radam  v.  Capital  Microbe  Destroyer  Co.,  81  Tex.  122-1891, 16  S.  W.  990 273 

Radische  Anilin,  etc.,  v.  Klipstein,  125  Fed.  543,  556-1903  (C.  C.  S.  D.  N.  Y.) . . .   604 

Rains  &  Sons  v.  White,  Haucke  &  Co.,  107  Ky.  114-1899,  52  S.  W.  970 265 

Randall  v.  British  &  American  Shoe  Co.,  19  R.  P.  C.  393-1902 692 

Ranft  v.  Reimers,  200  111.  386 317 

Ransome  v.  Bentall,  3  L.  J.  Ch.  N.  S.  161 105 

Rapp  v.  Over,  3  Brewst.  (Pa.)  133-1869 57 

Rathborne,  Sard  &  Co.  v.  Champion  Co.,  189  Fed.  26 286 

Ratcliffe  v.  Evans,  C.  A.  1892, 2  I.  B.  525-533 502 

Raycroft  v.  Tayntor,  68  Vt.  219 354 

Raymond  v.  Royal  Baking  Powder  Co.,  29  C.  C.  A.  (7th  Cir.)  245-1898,  85  Fed. 

231 698 

Raymond  v.  RusseU,  143  Mass.  295-1887,  9  N.  E.  544 479 

Raymond  v.  Yarrington,  73  S.  W.  800,  62  L.  R.  A.  962,  96  Tex.  400-1903,  96  Tex. 

400 337,  352 

Read  Brothers  v.  Richardson  &  Co.,  45  L.  T.  N.  S.  54-1881  (Ct.  App.). .  230,  586,  665 
Reading  Stove  Works  v.  Howes,  S.  M.  Co.,  201  Mass.  437-87  N.  E.  751 .  .  288,  394,  725 

Reddaway  v.  Banham,  App.  Cas.  199-1896,  13  R.  P.  C.  218 12,  70,  72,  390,  599 

Reed,  Dr.  A.,  Cushion  Shoe  Co.  v.  Frew,  158  Fed.  552-1908  (C.  C.  N.  Y.) . .  704,  721, 

723 

Regent  Shoe  Mfg.  Co.  v.  Haaker,  75  Nebr.  426, 106  N.  W.  595-1906 684 

Regis  V.  Jaynes  &  Co.,  191  Mass.  245,  77  N.  E.  774.  .713,  714,  716,  722,  723,  725, 

727,  730,  731,  732 

Regis  V.  Jaynes  &  Co.,  185  Mass.  458-1904, 70  N.  E.  480 96,  731 

Reisch  Brewing  Co.,  In  re,  30  App.  D.  C.  445 435 

Renf t  V.  Reimer.  200  111.  386-1902, 65  N.  E.  720 56 


Ivi  Table  of  Cases 

PAOEJ 

Kcpctti  V.  Louis  Ilepetti,  Inc.,  et  al.,  6  Trade-Mark  Rep.  94 160,  177 

Revere  Rubber  Co.  v.  Consolidated  Hoof  Pad  Co.,  139  Fed.  151-1905  (C.  C.  S.  D. 

N.  Y.) 89 

Rcymer  &  Bros.,  Inc.,  v.  Huyler's,  190  Fed.  83 398,  401 

R.  J.  Reynolds  Tobacco  Co.  v.  Allen  Bros.  Tobacco  Co.,  151  Fed.  819-1907 

(C.  C.  Va.) 250,  668 

Rice  V.  Albee,  164  Mass.  88,  41  N.  E.  122 346 

Rice  V.  Manlcy,  66  N.  Y.  82-1876 327,  338,  346,  348,  353,  354 

Ricc-Stix  &  Co.  V.  J.  A.  Scriven  Co.,  165  Fed.  639-1908 289,  392,  396 

Richards  v.  Williamson,  30  T.  L.  Rep.  746-1874 288 

Richmond  Nervine  Co.  v.  Richmond,  159  U.  S.  293-1895,  40  L.  ed.  155,  16 

Sup.  Ct.  30 47,  49 

Richter  v.  Reynolds,  59  Fed.  577-1893  (C.  C.  A.  3d  Cir.) 606 

Ricker  v.  Leigh,  74  A.  D.  N.  Y.  138 654 

Rickerby  v.  Reay,  20  R.  P.  C.  380-1903  (Ch.  Div.) 32,  42 

Riding  v.  Smith,  1  Ex.  D.  91 502 

Ripley  V.  Griffiths,  19  R.  P.  C.  591-1902 72 

Robb  V.  Green,  64  L.  J.  I.  B.  N.  S.  593 319 

Robb  V.  Green,  2  Q.  B.  D.  315-1895.    And  see  2  Q.  B.  D.  1 306,  318 

Roberts  v.  McKee,  29  Ga.  161-1859 321 

Roberts  v.  Sheldon,  8  Biss.  398 397 

Robertson  v.  Berry  &  Co.,  50  Md.  591-1878 20,  538 

Robinson  v.  Storm,  103  Tenn.  40-1899,  52  S.  W.  880 156 

Robinson  v.  Texas  Pine  Lands  Assn.,  40  S.  W.  843-1897  (C.  C.  A.  Tex.) 366 

Rodgers  v.  Nowill,  6  Hare,  325-1846,  3  De  G.  M.  &  G.  614-1853 121,  708 

Rogers,  R.  W.,  Co.  v.  Wm.  Rogers  Mfg.  Co.,  17  C.  C.  A.  576,  70  Fed.  1017- 

1895 50,  175,  182 

Rogers,  Wm.  A.  v.  International  SUver  Co.,  30  App.  Cas.  (D.  C.)  97 426 

Rogers,  WiUiam  G.,  Co.  v.  International  Silver  Co.,  118  Fed.  133 175,  639 

Rogers,  William,  Mfg.  Co.  v.  Rogers  Mfg.  Co.,  16  Phila.  178  (Com.  PI.  Phila. 

1883) 128,  145 

RoUins  v.  Hinks,  L.  R.  13  Eq.  355-1872 481 

Romeike,  Inc.,  Henry,  v.  Albert  Romeike  &  Co.,  Inc.,  7  Trade-Mark  Rep.  16.  .160, 

177,  185 

Roncornoni  v.  Gross,  92  App.  Div.  (N.  Y.)  221 406 

Root  V.  Lake  Shore  &  M.  S.  R.  Co.,  105  U.  S.  189,  214,  26  L.  ed.  975,  984.  ..  .  715 
Rose  Hill  Race  Course  Company,  The,  In  re,  5  St.  Reps.  New  South  Wales, 

402-1905 37 

Rosenberg,  Matter  of,  N.  Y.  Law  Journal,  May  9,  1908 65 

Roseneau  v.  Empire  Circuit  Co.,  131  A.  D.  429 353 

Rossman  v.  Gamier,  211  Fed.  401-1914  (C.  C.  A.  8th  Cir.) .  .  394,  406,  468,  605,  721 

Routh  V.  Webster,  10  Beav.  561-1847 473,  481 

Rowland  v.  MicheU,  14  R.  P.  C.  37-1896  (reported  in  Ch.  Div.  13  R.  P.  C.  457) .  99 

Rowley  v.  Houghton,  2  Brewst.  (Pa.)  303-1868 98 

Rowley  Co.  v.  Rowley,  193  Fed.  390  (113  C.  C.  A.  386) 714,  724 

Rowley,  J.  F.,  Co.  v.  Rowley,  154  Fed.  744-1907  (C.  C.  Pa.),  modified  161  Fed. 

94 139,  140 

Royal  Baking  Powder  Co.  v.  Davis,  26  Fed.  293-1885  (C.  C.  E.  D.  Mich.) ....  262 

Royal  Baking  Powder  Co.  v.  Raymond,  70  Fed.  376 398,  696 

Royal  Baking  Powder  Co.  v.  Royal,  122  Fed.  337-1903,  58  C.  C.  A.  499-506.  .  125 

Royal  Irish  Linen  Hurd  &  Co.,  Ex  parte,  590  G.  1763 76 


Table  of  Cases  Ivii 

PAGE 

Rubber  Co.  v.  Goodyear,  9  Wall.  (U.  S.)  788,  19  L.  ed.  566 720,  732 

Rubber  &  CeUuloid  H.  T.  Co.  v.  Rubber  Bound  Brush  Co.,  81  N.  J.  Eq.  419, 

519,  88  Atl.  210 393 

Rubber  &  C.  H.  T.  Co.  v.  F.  W.  Devoe,  etc.,  Co.,  233  Fed.  150 393,  724 

Rubel  V.  AUegretti  Chocolate  Cream  Co.,  76  111.  App.  581-1898 145 

Rugby  Portland  Cement  Co.,  Ltd.,  v.  Rugby  &  N.  P.  C.  Co.,  Ltd.,  9  R.  P.  C. 

46-1891 203 

Rumford  Chemical  Works  v.  Muth,  1  L.  R.  A.  44-1888,  35  Fed.  524-1888 98 

Rushmore  v.  Badger  Brass  Co.,  198  Fed.  379-1912  (C.  C.  A.  2d  Cir.) . . .  .283,  590, 

723,  727 
Rushmore  v.  Manhattan  Screw  &  Stamping  Works,  163  Fed.  939-1908  (C.  C. 

A.  2d  Cir.  1908) 236,  283,  393 

Rushmore  v.  Saxon,  154  Fed.  213-1907,  C.  C.  A.  2d  Cir.,  Nov.,  1908,  170  Fed. 

1021,  C.  C.  A.  2d  Cir.,  June,  1909,  mod.  and  aff'g  158  Fed.  499  .. .  .592,  642 

Russia  Cement  Co.  v.  Fauenhar,  133  Fed.  518-1904  (CCA.) 254 

Russia  Cement  Co.  v.  Katzenstein,  109  Fed.  314-1901  (C.  C  S.  D.  N.  Y.) 254 

Russia  Cement  Co.  v.  LePage,  147  Mass.  206-1888,  17  N.  E.  304 40,  146 

Rutter  &  Co.  v.  Smith,  18  R.  P.  C  49-1901 669 


Safety  Remedy  Co.,  In  re,  35  App.  D.  C  353 439 

St.  Paul  Electric  Co.  v.  McCrum-Howell,  189  Fed.  849-1911  (C  C  A.  8th  Cir.)  277 

Salomon  v.  Hertz,  40  N.  J.  Eq.  400-1885,  2  Atl.  379 295,  311,  315 

Salvation  Army  v.  American  Salvation  Army,  135  A.  D.  (N.  Y.)  268 187 

Samson  Cordage  Works  v.  Puritan  Cordage  Mills,  193  Fed.  274,  194  Fed.  573, 

211  Fed.  603-1914  (C.  C  A.  6th  Cir.) 384,  570 

Samuel  v.  Berger,  24  Barb.  163-1856  (N.  Y.  Sup.  Ct.) 39 

Samuel  &  Co.  v.  Hostetter,  118  Fed.  257-1902  (C  C  A.  9th  Cir.) 604 

Samuel  Bros.  &  Co.  v.  Hostetter  Co.,  55  C.  C  A.  Ill,  118  Fed.  257 256,  680 

Samuels  v.  Spitzer,  177  Mass.  226-1900,  58  N.  E.  693 598 

Sanders  v.  Jacob,  20  Mo.  App.  96-1885 621 

Sanders  v.  Utt,  16  Mo.  App.  322-1884 224 

Sanford  Day  Iron  Works  v.  Enterprise  Foundry  &  Machine  Works,  172  So.  W. 

537  (Tenn.  Sup.  Ct.) 150 

Sarrazin  v.  Irby  Cigar  &  Tobacco  Co.,  Ltd.,  35  C  C  A.  496,  93  Fed.  624-1899, 

46  L.  R.  A.  541n 50 

Sartor  v.  Schaden,  125  Iowa,  696-1904,  101  N.  W.  511. . .  .28,  76,  92,  376,  549, 

638,  690,  700 
Sauers  Milling  Co.  v.  Kehlor  Flour  MiUs  Co.,  39  App.  D.  C.  535 .  392,  396,  439,  455 

Savage  v.  Hoffman,  159  Fed.  Rep.  584 534 

Sawyer  Crystal  Blue  Co.  v.  Hubbard,  32  Fed.  388-1887  (C  C  Mass.),  see  7  Fed. 

720 256,  264 

Sawyer  v.  KeUogg,  7  Fed.  720-1881  (C  C  N.  J.) 262 

Sawyer  v.  Kellogg,  9  Fed.  601 716 

Saxlehner  v.  Eisner  &  Mendelson  Co.,  88  Fed.  61-1898  (C  C  S.  D.  N.  Y.), 

138  Fed.  22-1905  (C  C.  A.  2d  Cir.),  179  U.  S.  19-1900,  44  L.  ed.  60,  21 

Sup.  Ct.  7..  398,  417,  695,  696,  703,  708,  718,  721,  725,  726,  730,  733,  734 
Saxlehner  v.  Eisner  &  M.  Co.,  147  Fed.  189-1906  (C  C.  A.  2d  Cir.),  afif'g  140 

Fed.  938-1905  (C.  C  S.  D.  N.  Y.) 638,  641 

Saxlehner  v.  Nielson,  179  U.  S.  43-1900,  44  L.  ed.  77,  21  Sup.  Ct.  16 708 


Iviii  Table  of  Cases 

PAGE 

Saxlehner  v.  Siegel-Cooper  Co.,  179  U.  S.  42 721 

Sayre  v.  McGill  T.  P.  Co.,  200  Fed.  771 570,  575 

Schendel  v.  Silver,  G3  Ilun  (N.  Y.),  330 398 

Schenker  v.  Auerbach,  89  App.  Div.  (N.  Y.)  612 642 

Scheuer  v.  Mullcr,  74  Fed.  225-1896,  20  C.  C.  A.  161 631 

iSohinidt  V.  Brieg,  100  Cal.  672-1893,  35  Pac.  623,  22  L.  R.  A.  790 236,  702 

Schneider  v.  WiUiams,  44  N.  J.  Eq.  391,  14  Atl.  812 411,  416 

Schoenhofen,  Peter,  Brewing  Co.  v.  Maltine  Co.,  30  App.  Cas.  (D.  C.)  340- 

1908 376 

Schu.ster  Co.  v.  MuUer,  28  App.  Cas.  (D.  C.)  409-1906 437,  681 

Schwann  v.  Miele,  203  Fed.  176 245 

Schweinfurter,  In  re,  38  App.  D.  C.  279 439,  449 

Schweppes,  Ltd.,  v.  Gibbens,  22  R.  P.  C.  601-1905 273 

Scidmore  v.  Smith,  13  Johns.  (N.  Y.)  322-1816 339 

Scott  V.  Prudential  Outfitting  Co.,  92  Misc.  195  (155  N.  Y.  Supp.  497) 349 

Scott  V.  Jackson,  89  Cal.  258-62 706 

Scriven,  J.  A.,  Co.  v.  Girard  Co.,  140  Fed.  794-1905  (C.  C.  S.  D.  N.  Y.) 92 

Scriven,  J.  A.,  Co.  v.  Morris,  154  Fed.  914-1907,  aff'd  158  Fed.  1020 292 

Scriven  v.  North,  134  Fed.  366-1904  (C.  C.  A.  4th  Cir.),  67  C.  C.  A.  348,  s.  c, 

modifying  124  Fed.  894-1903   (C.  C.  Md.)...4,  289,  292,  387,  392,  630, 

659,  662,  666 

Seabury  v.  Grosvenor,  14  Blatchf .  (U.  S.)  262-1877 674 

Seamless  Rubber  Co.,  In  re,  34  App.  D.  C.  357 439 

Searchlight  Gas  Co.  v.  Pres-O.-Lite  Co.,  215  Fed.  692  (C.  C.  A.  7th  Cir.) 554 

Sears  &  Nichols  Co.  v.  Brakely,  38  App.  D.  C.  530 439,  447 

Sears,  Roebuck  &  Co.  v.  Elliott  Varnish  Co.,  232  Fed.  588 393 

Seeger  Refrig.  Co.  v.  White  Enamel  R.  Co.,  178  Fed.  567-1910   (C.  C.  D. 

Minn.) 605 

Seeley  v.  Fisher,  11  Sim.  581-1841 473,  480,  481 

Seigert  v.  Findlater,  7  Ch.  Div.  801-1878 73 

Seixo  v.  Provezende,  L.  R.  1  Ch.  App.  192-1865.  73,  191,  192,    196,   199,  212,  246 

Selchow  V.  Baker,  93  N.  Y.  59 395 

Selchow  V.  Chaffee  &  Selchow  Mfg.  Co.,  132  Fed.  996-1904  (C.  C.  S.  D.  N. 

Y.) 100,  406 

Seubert  v.  SantaeUa  &  Co.,  36  App.  D.  C.  447 414 

Sexton  &  Co.  v.  Alart  &  McGuire  Co.,  114  Ms.  Dec.  320 437 

Sexton  &  Co.  v.  Arnold  &  Co.,  113  Ms.  Dec.  242 437 

Sharpless  Co.  v.  Lawrence,  213  Fed.  423-1914  (C.  C.  A.  3d  Cir.) 388,  715,  716 

Shaver  v.  HeUer  &  Merz  Co.,  108  Fed.  821-1901  (C.  C.  A.  8th  Cir.),  65  L.  R. 

A.  878 13,  18,  27,  48,  193,  670 

Shaver  v.  Shaver,  54  Iowa,  208-1880,  6  N.  W.  188 40 

Shaw  V.  Pilling,  175  Pa.  St.  78-1896 284,  604 

Shaw  Stocking  Co.  v.  Mack,  21  Blatchf.  1-1882  (C.  C.  N.  Y.) 106 

Shaw  Co.  V.  Mack,  12  Fed.  707 588 

Shelly  V.  Sperry,  121  Mo.  App.  429 410 

Shepard  v.  Stuart,  Am.  T.  M.  Cas.  (Price  &  S.  193,  1  B.  Phil.  117) 662 

Shepherd  v.  Wakeman,  1  Sid.  79 327 

Shepp  v.  Jones,  35  Wkly.  Notes  Cas.  (Pa.)  29-1892 278,  279 

Sherry  v.  Perkins,  147  Mass.  212 487 

Sherwood  v.  Andrews,  5  Am.  L.  R.  N.  S.  588-1866 218 


Table  of  Cases  lix 

PAGE 

Shoemaker  v.  South  Bend  Spark  Arrester  Co.,  135  Ind.  471-1893,  35  N.  E.  280, 

22  L.  R.  A.  332 491 

Shonk  Tin  Printing  Co.  v.  Shonk,  138  111.  34-1891,  27  N.  E.  529 313 

Siegert  v.  Abbott,  61  Md.  276-1883 676,  682 

Siegert  v.  Gandolfi,  149  Fed.  100-1906  (75  C.  C.  A.  145) 68,  217,  680 

Silkman,  Matter  of,  121  App.  Div.  (N.  Y.)  202 65 

Silver  &  Co.  v.  Waterman,  122  App.  Div.  (N.  Y.)  373 575 

Silver  Spring  Co.  v.  Woolworth,  16  R.  I.  729-1886,  19  Atl.  528 311 

Simmons  Medicine  Co.  v.  Mansfield  Drug  Co.,  93  Tenn.  84-1893,  23  S.  W. 

165 671,  690 

Simmons,  C.  F.,  Medicine  Co.  v.  Simmons,  81  Fed.  163-1897  (C.  C.  A.  Ark.) .  .  247, 

268,  316 

Simplex  Auto  Co.  v.  Kahnweiler,  162  App.  Div.  480 422 

Singer  Machine  Manufacturers  v.  Wilson,  L.  R.  3  App.  Cas.  376-1877 . .  19,  20, 

602,  612,  614,  663 

Singer  Mfg.  Co.  v.  Domestic  Sewing  Machine  Co.,  49  Ga.  70-1873 480,  499 

Singer  Mfg.  Co.  v.  June  Mfg.  Co.,  163  U.  S.  169-1895,  41  L.  ed.  118,  16  Sup.  Ct. 

1002 144,  154,  288,  379,  405,  534,  716,  727 

Singer  Mfg.  Co.  v.  Loog,  L.  R.  8  App.  Cas.  15-1882,  18  Ch.  Div.  395-1880.  .6,  14, 

19,  25,  594,  661,  665 

Singleton  v.  Bolton,  3  Dougl.  293 6 

Sipe  «&;  Co.,  James  B.,  v.  Columbia  Refining  Co.,  171  Fed.  295 571 

Skinner  v.  Oaker,  10  Mo.  App.  45-1881 43 

Slater  v.  Slater,  175  N.  Y.  143-1903,  67  N.  E.  224,  61  L.  R.  A.  796 61,  62 

Smith  v.  Atlas  Mfg.  Co.,  231  U.  S.  348 461,  462 

Smith  V.  David  H.  Brand  &  Co.,  67  N.  J.  Eq.  529-1904,  58  Atl.  1029 59 

Smith  v.  Everett,  27  Beav.  446-1859 60 

Smith  V.  Fair,  14  Ont.  729 407 

Smith  V.  Kenian,  8  Ohio  Dec.  Repr.  32  (cited  in  note  31  L.  R.  A.  N.  S.  260, 

261) 319 

Smith  V.  Kernan  (Ohio),  5  Law  Bui.  145,  8  Ohio  Dec.  Reprint,  32 295 

Smith  V.  Krause,  160  Fed.  270 384 

Smith  V.  Sixbury,  25  Hun,  232 395 

Smith  et  al.  v.  Hitchcock,  226  U.  S.  53,  33  Sup.  Ct.  6 428 

Smith  &  Davis  Mfg.  Co.  v.  Smith,  89  Fed.  486-1898  (C.  C.  N.  D.  lU.) 104 

Smithies  v.  National  Association  of  Operative  Plasterers  (L.  R.),  1  K.  B.,  310- 

1909 333,  354 

Snow  v.  Judson,  38  Barb.  (N.  Y.)  210-1862 346,  483 

Snowden  v.  Noah,  1  Hopk.  (N.  Y.)  348-1825 539 

Snyder  Mfg.   Co.   v.   Snyder,  54  Ohio  St.  86-1896,  43   N.   E.   325,   31  L. 

R.  A.  657 •  ■ 41 

Social  Register  Assn.  v.  Howard,  60  Fed.  270-1894  (C.  C.  N.  J.) 526 

Social  Register  Assn.  v.  Murphy,  128  Fed.  116-1904  (C.  C.  R.  I.) 527 

Society  of  Accountants  and  Auditors  v.  Goodway  (1907,  Ch.  Div.),  76  L.  J.  Ch. 

384 75 

Societ6  Anonyme  v.  Western  Distilling  Co.,  46  Fed.  921-1891  (C.  C.  E.  D.  Mo.)  .719, 

730 
Society  Anonyme,  etc.,  v.  Western  Distilling  Co.,  43  Fed.  41fr-1890  (C.  C.  E.  D. 

Mo.) 685 

Society  of  the  War  of  1812  v.  The  Society  of  the  War  of  1812  in  the  State  of 

New  York,  46  App.  Div.  (N.  Y.)  568-1900,  62  N.  Y.  Supp.  355 168 


Ix  Table  of  Cases 

PAGE 

Sohier  v.  Johnson,  111  Mass.  238-1872 62 

Solar  Baking  Powder  Co.  v.  Royal  Baking  Powder  Co.,  128  App.  Div.  (N.  Y.) 

550 650 

Solis  Cigar  Co.  v.  Pozo,  16  Colo.  388-1891,  26  Pac.  556 50,  51,  270,  683,  690 

South  Brewery  Co.,  In  re,  32  App.  D.  C.  591 439 

Southern  v.  How,  Poph.  144 5,  7 

South  Wales  Miners'  Fed.  v.  Glamorgan,  App.  Cas.  239-1905.  .326,  328,  330,  333, 

345,  350,  354 

Southern  White  Lead  Co.  v.  Cary,  25  Fed.  125-1885 213 

Spalding  &  Bros.,  In  re,  27  App.  D.  C.  314-1906 428,  447 

Spalding  &  Bros.,  A.  G.,  v.  A.  W.  Gamage,  Ltd.,  32  R.  P.  C.  237,  110  L.  T. 

530-1914 563 

Sperry  &  Co.  v.  Percival  Milling  Co.,  81  Cal.  252-1889,  22  Pac.  651. .  .  .95,  96,  265 
Sperry  &  Hutchinson  Co.  v.  Mechanics'  Clothing  Co.,  128  Fed.  800-1904  (C.  C. 

R.  I.) 361,  553 

Sperry  &  Hutchinson  Co.  v.  Pommer,  208  Fed.  804 -.  .   350 

Sperry  &  Hutchinson  Co.  v.  L.  Weber  &  Co.,  161  Fed.  219-1908  (C.  C.  111.).  .367, 

553,  669 

Spiegel  V.  Zuckerman,  188  Fed.  63 459 

Spottiswoode  v.  Clark,  10  London  Jurist  R.,  1043,  2  Sandf.  Ch.  R.  628 725 

Spottiswoode  v.  Clarke,  2  Phil.  154-1846 642 

Sprigg  V.  Fisher,  222  Fed.  964 577 

Springhead  Spinning  Co.  v.  Riley,  L.  R.  6  Eq.  551-1868 481 

Stachelberg  v.  Ponce,  23  Fed.  430-1885 218,  682 

Stagg,  Geo.  W.,  Co.  v.  Taylor,  95  Ky.  651 406 

Stamatopoulos  v.  Stephano  Bros.,  41  App.  D.  C.  590 457 

Standard  Brewery  Co.  v.  Interboro  Brewing  Co.,  44  App.  D.  C.  193 457 

Standard  Brewery  Co.  v.  Interboro  Brewing  Co.,  229  Fetl.  543 428 

Standard  Oil  Co.,  In  re,  39  App.  D.  C.  491 454 

Standard  Oil  Co.  v.  Doyle,  118  Ky.  662-1904,  82  S.  W.  271 368,  551 

Standard  Paint  Co.  v.  Trinidad  Asphalt  Co.,  220  U.  S.  446 392 

Standard  Table  Oil  Cloth  Co.  v.  Trenton  Oil  Cloth  &  Linoleum  Co.,  71  N.  J. 

Eq.  555,  63  Atl.  846-1906 103 

Standard  Underground  Cable  Co.,  27  App.  D.  C.  320,  In  re, 429 

Standard  Varnish  Works  v.  Fisher,  Thorsen  &  Co.,  153  Fed.  928-1907  (C.  C. 

Oreg.) 577 

Star  Co.  V.  Wheeler  Syndicate,  Inc.,  91  Misc.  (N.  Y.)  640-1915 542 

Star  Brewery  Co.  v.  Val  Blatz  Brewing  Co.,  36  App.  D.  C.  534 697 

State  V.  Dalton,  83  S.  E.  693-1914 551 

State,  The,  v.  McGrath,  75  Mo.  424-1882 182 

Stecher  Lithograph  Co.  v.  Dunston  Lithograph  Co.,  233  Fed.  601 512 

Steiff  V.  Bing,  206  Fed.  000,  124  C.  C.  A.  560,  215  Fed.  204 547,  573 

Stein  V.  National  Life  Assn.,  105  Ga.  821-1898,  32  S.  E.  615,  46  L.  R.  A.  150.  .60, 

309,  319 
Stein,  A.,  &  Co.  v.  Liberty  Garter  Mfg.  Co.,  198  Fed.  95&-1912  (D.  C.  S.  D.  N. 

Y.) 401,  602 

Steinert  &  Sons  Co.  v.  Tagen,  207  Fed.  394-1911 488 

Steinfeld  v.  National  Shirt  Waist  Co.,  99  App.  Div.  (N.  Y.)  280-1904,  90  N. 

Y.  Supp.  964 61 

Steinway  &  Sons  v.  Henshaw,  5  R.  P.  C.  77-1887  (Ch.  Div.) 97 

Stephens  v.  Peel,  16  L.  T.  N.  S.  145-1867 95,  263 


Table  of  Cases  Ixi 

PAGE 

Sterling  Remedy  Co.  v.  Eureka  Chemical  &  Mfg.  Co.,  70  Fed.  704-1895  (C.  C. 

W.  D.  Wis.),  80  Fed.  105 95,  393 

Sterling   Remedy   Company    v.    Gorey,    110    Fed.    372-1901    (C.    C.   N.   D. 

Ohio) 265 

Sterling  Remedy  Co.  v.  Spermine  Medical  Co.,  112  Fed.  1000-1901  (C.  C.  A. 

7th  Cir.),  106  Fed.  414-1901  (C.  C.  A.  2d  Cir.) 98,  239,  595,  651 

Sterling  Varnish  Co.  v.  Macon,  217  Fa.  St.  7-1907,  66  Atl.  78 301 

Stern  v.  Barrett  Chemical  Co.,  29  Misc.  (N.  Y.)  609 395 

Sternberg   Mfg.    Co.    v.    Miller   &   Co.,   161   Fed.  318-1908   (C.  C.   A.  8th 

Cir.) 291,  405 

Stevens  Linen  Works  v.  Wm.  &  John  Don  &  Co.,  127  Fed.  950 407 

Stevens  v.  Stiles,  29  R.  I.  399-1909 818 

Stewart  v.  Hook,  118  Ga.  445,  45  S.  E.  369,  63  L.  R.  A.  255 303 

Stewart  v.  Smithson,  1  Hilt,  119  (N.  Y.  Com.  Pleas.  1856) 385 

Stirling  Silk  Mfg.  Co.  v.  Sterling  Silk  Co.,  59  N.  J.  Eq.  394-1900,  46  Atl.  199.  .599, 

641,  688,  705 
Stix,  Baer  &  Fuller  Dry  Goods  Co.  v.  American  Piano  Co.,  211  Fed.  271. .  118,  132 

Stokes  V.  Allen,  56  Hun,  526 516,  522 

Stone  V.  Grasselli  Chemical  Co.,  65  N.  J.  Eq.  756-1903,  55  Atl.  736,  63  L.  R. 

A.  344 301,  310 

Stonebraker  v.  Stonebraker,  33  Md.  252-1870 146,  150 

Stoughton  V.  Woodard,  39  Fed.  902 394 

Straus  V.  Notaseme  Co.,  240  U.  S.  179 235 

Street  v.  Union  Bank,  30  Ch.  Div.  156-1885 114 

Stuart  v.  Simpson,  1  Wend.  376-1828 339 

Stuart  V.  F.  G.  Stewart  Co.,  91  Fed.  243-1899  (C.  C.  A.  7th  Cir.) 97,  589 

Suburban  Press  v.  Philadelphia  Suburban  Pubg.  Co.,  227  Pa.  148-1910 536 

Success  Co.,  In  re,  34  App.  D.  C.  443 438 

Summit  City  Soap  Works  v.  Standard  Soap  Co.,  37  App.  D.  C.  604 436 

Sunwalt  Ice  Co.  v.  Knickerbocker  Ice  Co.,  114  Md.  403 365 

Supreme  Lodge,  Knights  of  Pythias  v.  Improved  Order  Knights  of  Pythias, 

113  Mich.  133-1897,  71  N.  W.  470,  38  L.  R.  A.  658 187 

Swain  v.  Seamens,  9  Wall.  254-1869,  76  U.  S.  254,  19  L.  ed.  554 706 

Swift  &  Co.  v.  Brenner,  125  Fed.  826-1903  (C.  C.  S.  D.  N.  Y.) 631 

Sykes  v.  Sykes,  3  B.  &  C.  541-1824 14,  19,  81 

Symonds  v.  Jones,  82  Me.  302-1890 682 

T 

Tabor  v.  Hoffman,  118  N.  Y.  30-1889,  23  N.  E.  12,  16  Am.  St.  Rep.  740.  .295,  296, 

300,  302 
Taendsticksfabriks  Akticbolagat  Vulcan  v.  Myers,  139  N.  Y.  364-1893,  34 

N.  E.  904 266,  640 

Tallcot  V.  Moore,  6  Hun,  106-1875 585 

Tallerman  v.  Dowsing  Radiant  Heat  Co.  (1900),  1  Ch.  1 27 

Tarleton  v.  McGawley,  1  Peake  N.  P.  C.  205 327,  369 

Tarrant  &  Co.  v.  Johann  Hoff,  76  Fed.  959-1896,  22  C.  C.  A.  644 125 

Tasker  v.  Stanley,  153  Mass.  148 340 

Tavis  v.  Knapp,  121  Fed.  34 296 

Taylor  v.  Carpenter,  11  Paige,  292,  2  S.  ndf.  Ch.  603-1845 21 

Taylor  v.  Carpenter,  3  Story,  458-1844,  Cas.  No.  13,784,  Cox.  Am.  T.  M.  Cases, 

p.  14 5,  401,  410,  702 


Ixii  Table  of  Cases 

PAGE 

Taylor  v.  GiUies,  5  Daly,  285  (aff'd  59  N.  Y.  331) 396,  398 

Taylor  Co.,  S.  T.,  v.  Nast,  154  N.  Y.  Supp.  982 538 

Taylor  Iron  &  Steel  Co.  v.  Nichols,  70  N.  J.  Eq.  541-1905,  01  Atl.  946,  69  Atl. 

186-1908  (N.  J.  Er.  &  App.)  s.  c,  65  Am.  Rep.  695-1907 301,  309,  341 

Taylor  v.  Taylor,  23  L.  J.  Ch.  (N.  S.)  255 401 

Taylor,  E.  H.,  Jr.,  &  Sons  Co.  v.  Taylor,  27  Ky.  L.  Rep.  625,  85  S.  W.  1085- 

1905 147 

Teacher  v.  Levy,  23  R.  P.  C.  117-1905 257 

Teed  V.  Elworthy,  14  East,  210,  Creenlf.  Ev.  278 114 

Temperton  v.  Ru.ssell,  1  Q.  B.  D.  715-1893 338,  345,  363 

Temple  v.  Gordon,  159  Pa.  983 393 

Teofani  &  Co.,  Ltd.,  v.  Teofani,  30  R.  P.  C.  446 404 

Tetlow  V.  Tappin,  85  Fed.  774 412 

Thacker  Coal  &  Coke  Co.  v.  Burke,  59  W.  Va.  253-1906,  53  S.  E.  101,  5  L.  R. 

A.  N.  S.  1091 335 

Theodore  Rectanus  Co.  v.  United  Drug  Co.,  220  Fed.  546-1915 74,  449 

Thermogene  Co.,  Ltd.,  v.  Thermogine  Co.,  Inc.,  234  Fed.  69  (CCA.) 393 

Thibodeau  v.  Hildreth,  124  Fed.  892 308 

Thomas  v.  Williams,  L.  R.  14  Ch.  Div.  864-1880 475,  483,  484,  505 

Thompson  v.  Montgomery,  41  Ch.  Div.  35-1889,  aff'd  App.  Cas.  217-1891, 

"Stone  Ale" 73,  104,  618 

Thorley's  Cattle  Food  Co.  v.  Massam,  L.  R.  6  Ch.  Div.  482-1877,  see  on  appeal 

14  Ch.  Div.  763-1880 474,  475,  483,  484 

Thorneloe  v.  Hill,  11  R.  P.  C  61-1894  (Ch.  Div.) 44 

Thura  &  Co.  V.  Tloczynski,  114  Mich.  149-1897,  38  L.  R.  A.  200,  72  N.  W.  140. .  308 

Thynne  v.  Shove,  45  Ch.  Div.  577-1890 57 

Tilghman  v.  Proctor,  125  U.  S.  136,  148,  31  L.  ed.  664,  668,  8  Sup.  Ct.  Rep.  894 

(Patent  Cases) 715 

Tim  &  Co.  V.  Cluett,  Peabody  &  Co.,  42  App.  D.  C  212 450 

Tipping  V.  Clarke,  2  Hare,  393 311 

Tobias  v.  Harland,  4  Wend.  (N.  Y.)  537-1830 496,  499 

Tode  V.  Gross,  127  N.  Y.  480-1891,  28  N.  E.  469,  13  L.  R.  A.  652,  note 312 

Toledo,  etc.,  Ry.  Co.  v.  Pennsylvania  Co.,  54  Fed.  730-1893  (C  C.  Ohio),  19 

L.  R.  A.  387 505 

Tolman  v.  Mulcahy,  119  App.  Div.  (N.  Y.)  42-1907,  103  N.  Y.  Supp.  936 305 

Trade-mark  Cases,  100  U.  S.  82,  25  L.  ed.  550..  .376,  379,  413,  426,  428,  446,  618 

Traiser  v.  Daty  Cigar  Co.,  198  Mass.  327 461,  465 

Trego  V.  Hunt,  12  T.  R.  R.  80-1895  (1896),  App.  Cas.  7 55,  60,  317 

Tremaine  v.  Hitchcock  &  Co.,  90  U.  S.  518 729 

Tremolo  Patent,  23  Wall.  518,  23  L.  ed.  97,  90  U.  S.  518 729,  730 

Tuchman  v.  Welch,  42  Fed.  548-1890 40 

Turton  v.  Turton,  42  Ch.  Div.  128-1889 88,  110,  122,  621 

Tussaud  V.  Tussaud,  44  Ch.  Div.  678-1890 149 

tuttle  V.  Buck,  107  Minn.  145-1900 369,  560 

Twitchell  v.  Nelson,  126  Minn.  423 348 

U 

UdeU-Predock  Mfg.  Co.  v.  UdeU  Works,  32  App.  D.  C  282 438 

Underwood  Typewriter  Co.  v.  A.  B.  Dick  Co.,  36  App.  D.  C.  175 450 

Ungles-Hoggette  Mfg.  Co.  v.  Farmers'  Hog  &  Cattle  Powder  Co.,  232  Fed.  116  393 


Table  of  Cases  Ixiii 

PAGE 

Union  Distilling  Co.  v.  Schneider,  29  App.  D.  C.  1 454 

United  Drug  Co.  v.  Theodore  Rectanus  Co.,  206  Fed.  570  (D.  C.  Ky.,  1913) .  .    418 

United  Electric  Co.  v.  Creamery  P.  M.  Co.,  203  Fed.  53 496 

United  Lace  Co.  v.  Barthels  Mfg.  Co.,  213  Fed.  535-1914  (D.  C.  E.  D.  N.  Y.).  605 

United  L.  &  B.  Mfg.  Co.  v.  Barthels  Mfg.  Co.,  221  Fed.  456 237 

United  States  v.  Duell,  17  App.  Cas.  (D.  C.)  575-1901 425 

United  States  v.  Great  Lakes  Towing  Co.,  217  Fed.  656 567 

United  States  ex  rel.  Newcomb  Motor  Co.  v.  Moore,  30  App.  D.  C.  464 452 

United  States  Frame  &  Picture  Co.  v.  Horowitz,  51  Misc.  (N.  Y.)  101-1906, 

100  N.  Y.  Supp.  705,  139  A.  D.  895,  aflf'd  204  N.  Y.  630-1912.  .598,  599,  654 
U.  S.  Mercantile  Reporting  Co.  v.  U.  S.  Mercantile  Rep.  &  Collecting  Assn., 

21  Abb.  N.  C.  (N.  Y.)  115-1888 621 

United  States  Tobacco  Co.  v.  McGreenery,  144  Fed.  531-1906  (C.  C.  Mass.), 

aff'd  144  Fed.  1022 243 

Uri  V.  Hirsch,  123  Fed.  568-1903  (C.  C.  W.  D.  Mo.) 574,  578,  683 

V 

Vacuum  Oil  Co.  v.  Eagle  Oil  Co.,  154  Fed.  867,  aff'd  162  Fed.  671-1908 637 

Valentine  Meat  Juice  Co.  v.  The  Valentine  Extract  Co.,  Ltd.,  83  L.  T.  N.  S. 

259-1900,  17  R.  P.  C.  673 153 

Valvoline  Co.  v.  Havoline  Co.,  211  Fed.  189 436 

Van  Auken  Co.  v.  Van  Auken  Steam  Specialty  Co.,  57  111.  App.  240-1894 184 

Van  Camp  Packing  Co.  v.  Cruikshanks  Bros.  Co.,  90  Fed.  814-1898  (C.  C.  A. 

3d  Cir.) 642 

Van  Hoboken  v.  Mohns  &  Kaltenbach,  112  Fed.  528-1901  (C.  C.  N.  D.  Cal.)  .257, 

406,  407 

Van  Horn,  Ltd.,  v.  Coogan,  52  N.  J.  Eq.  380-1894,  28  Atl.  788 226,  687 

Van  Houten  v.  Hooten  Chocolate  Co.,  130  Fed.  600-1904  (C.  C.  N.  J.) .  .  .  624,  651 
Van  Kannel  Revolving  Door  Co.  v.  American  Revolving  Door  Co.,  215  Fed.  582  572 

Van  Raalt  v.  Schneck,  170  Fed.  1021 654 

Van  Stan's  Stratena  Co.,  Ltd.,  v.  Van  Stan,  209  Pa.  St.  564-1904,  58  Atl. 

1064 146,  156 

Van  Zile  v.  Nomb  Mfg.  Co.,  228  Fed.  829 245,  246 

Vassar  CoUege  v.  Loose-Wiles  Biscuit  Co.,  197  Fed.  982-1912  (W.  D.  Mo.) .  168,  486 

Vegalahn  v.  Gunter,  167  Mass.  92 340,  354,  487 

Viano  v.  Baccigalupo,  183  Mass.  160-1903,  67  N.  E.  641 179 

Victor  Safe  &  Lock  Co.  v.  Deright,  147  Fed.  211-1906  (C.  C.  A.  8th  Cir.) .  .478,  497 
Victor  Talking  Machine  Co.  v.  Armstrong,  132  Fed.  711-1904  (C.  C.  S.  D.  N.  Y.)  277 

Virginia  Baking  Co.  v.  Southern  Biscuit  Works,  111  Va.  227 421 

Virginia  Hot  Springs  Co.  v.  Hegeman  &  Co.,  138  Fed.  855-1905 381 

Virtue  v.  Creamery  P.  M.  Co.,  123  Minn.  17 369,  372,  496 

Vitascope  Co.  v.  U.  S.  Phonograph  Co.,  83  Fed.  30-1897  (C.  C.  N.  J.) 19 

Von  Au  V.  Magenheimer,  126  App.  Div.  (N.  Y.)  257 65 

Von  Bremen  v.  MacMonnies,  200  N.  Y.  41-1910 55,  317 

Vonderbank  v.  Schmitt,  44  La.  Ann.  264-1892,  15  L.  R.  A.  462,  10  So.  616. ...  42 
Von  Faber  v.  Faber,  124  Fed.  603-1903  (C.  C.  S.  D.  N.  Y.)..  .  .619,  625,  626,  649 

Von  Mumm  v.  Frash,  56  Fed.  830-1893 211 

Von  Mumm  v.  Steinmetz,  137  Fed.  168-1905  (C.  C.  S.  D.  N.  Y.) 706 

Vulcan  V.  Myers,  139  N.  Y.  364,  101  U.  S.  51 518,  601 

Vulcan  V.  Myers,  58  Hun,  161 620 


Ixiv  Table  of  Cases 

PAGE 

Vulcan  Detinning  Co.  v.  American  Can  Co.,  75  N.  J.  Eq.  542;  8.  c.  80  N.  J.  Eq. 

443 314 

Vulcan  Detinning  Co.  v.  American  Can  Co.,  67  N.  J.  Eq.  243-1904,  58  Atl. 

290,  72  N.  J.  Eq.  387,  67  Atl.  339 296,  303,  316,  320 

Vulcan  Detinning  Co.  v.  American  Can  Co.,  69  Atl.  1103-1908  (N.  J.  Eq.) .  .320,  649 

W 

Wagner  v.  Conried,  125  Fed.  798 511 

Wagner  Typewriter  Co.  v.  F.  S.  Webster  Co.,  144  Fed.  405-1906  (C.  C.  S.  D. 

N.  Y.) 286 

Waldes  v.  International  Manufacturers'  Agency,  U.  S.  Dist.  Ct.  Southern  Dis- 
trict of  N.  Y.  1916,  237  Fed.  502,  7  Trade-Mark  Rep.  7.  .380,  411,  414,  464, 

607 
Walker  v.  Cronin,  107  Mass.  555-1871. .  .326,  337,  338,  339,  340,  353,  362,  487 

Walker,  Hiram,  &  Sons  v.  Gnebman,  224  Fed.  725 236 

Walker  v.  Mottram,  19  Ch.  Div.  355-1881 • 52 

Wallach  v.  Wigmore,  87  Fed.  469 639 

Walter  v.  Emmot,  54  L.  J.  Ch.  N.  S.  1059-1885 535 

Wamsutta  Mills  v.  Allen,  Cox's  Manual,  660-1878  (Com.  PI.  Phila.) 98 

Warner  v.  Roehr,  29  Fed.  Cas.  266,  No.  17189a-1884 735 

Warner  v.  Searle  &  Hereth  Co.,  191  U.  S.  195 573 

Warren,  A.  D.,  v.  Warren  Thread  Co.,  134  Mass.  247-1883 50 

Warren  Featherbone  Co.  v.  American  Featherbone  Co.,  141  Fed.  513 405 

Warren  Featherbone  Co.  v.  Landauer,  151  Fed.  130-1903  (C.  C.  Wis.).  .491,  495, 

496,  501 

Warschauser  v.  Brooklyn  Furniture  Co.,  159  A.  D.  81 349,  352 

Waterbury  Chemical  Co.  v.  Reed,  41  App.  D.  C.  256 436 

Waterman  L.  E.  Co.  v.  Modern  Pen  Co.,  235  U.  S.  88,  35  Sup.  91-1914.  .132,  135, 

136,  138,  163,  647,  654 

Waterman  v.  Shipman,  130  N.  Y.  301-11 377 

Watkins  v.  Landon,  52  Minn.  389-1893,  54  N.  W.  193,  19  L.  R.  A.  236 302 

Wayne  County  Preserving  Co.  v.  Burt  Olney  Canning  Co.,  32  App.  D.  C.  279 .  435, 

452 

Weatherbee,  Matter  of.  New  York  Law  Journal,  Nov.  5,  1913 65 

Wedderburn  v.  Wedderburn,  22  Beav.  84-1855 60 

Weener  v.  Brayton,  152  Mass.  101,  25  N.  E.  46,  8  L.  R.  A.  640 23,  416 

Weingarten  v.  Charles  Bayer  &  Co.,  22  R.  P.  C.  341  (H.  L.,  1905) 90 

Weinstock,  Lubin  &  Co.  v.  Marks,  109  Cal.  529-1895,  42  Pac.  142,  30  L.  R.  A. 

182 14,  35,  258,  548,  597,  652 

Welch  V.  Knott,  4  K.  &  J.  747-1857 614 

Wellman  &  Dwire  Tobacco  Co.  v.  Ware  Tobacco  Works,  46  Fed.  289-1891 

(C.  C.  Minn.) 246 

Wells  V.  Ceylon  Perfume  Co.,  105  Fed.  621-1900  (C.  C.  S.  D.  N.  Y.) 94 

Wells  &  Richardson  Co.  v.  Abraham,  146  Fed.  190-1906  (C.  C.  E.  D.  N.  Y.), 

aff'd  149  Fed.  408-1906  (C.  C.  A.  2d  Cir.) 359,  360 

Wells  &  Richardson  Co.  v.  Siegel,  Cooper  &  Co.,  106  Fed.  77-1900  (C.  C.  111.).  394 

Welsbach  Light  Co.  v.  Adam,  107  Fed.  463 382,  412 

Welsh,  Matter  of,  Mills  Reports,  Vol.  9,  page  411 65 

Wentzel  v.  Barbin,  189  Pa.  St.  502 317 

Werckmeister  v.  American  Lithographic  Co.,  134  Fed.  321 511 

Wesley  v.  Native  Lumber  Co.,  97  Misc.  814-1910 367 


Table  of  Cases  Ixv 

PAGE 

West  Publishing  Co.  v.  Edward  Thompson  Co.,  169  Feri.  833-853 514 

West  Virginia  Transportation  Co.  v.  Standard  Oil  Co.,  50  W.  Va.  611-624.334.  371 

Westinghouse  v.  Wagner,  225  U.  S.  604 726 

Westcott  Chuck  Co.  v.  Oneida  Nat.  Chuck  Co.,  199  N.  Y.  247 716 

Westcott  Chuck  Co.  v.  Oneida  Nat.  Chuck  Co.,  122  App.  Div.  (N.  Y.)  260-1907  107 

Western  Electric  Co.,  In  re,  39  App.  D.  C.  420 393,  439 

Western  Grocer  Co.  v.  CaffareUi,  102  Tex.  104,  108  S.  W.  413-1908 599 

Westernset  v.  National  Paper  Co.,  154  Ind.  673,  57  N.  E.  552 510 

Westervelt  v.  National  Paper  &  Supply  Co.,   154  Ind.  673-1900,  57  N.  E. 

552 309 

Westminster  Laundry  Co.  v.  Hesse  Envelope  Co.,  174  Mo.  App.  238 557 

Weston  V.  Barnicoat,  175  Mass.  454 340 

Weston  V.  Ketcham,  51  How.  Pr.  N.  Y.  455 377 

Weyman  v.  Soderberg,  108  Fed.  63-1901  (C.  C.  W.  D.  Wis.) 227 

Weyman-Burton  Co.  v.  Old  Indian  SnuflF  Mills,  197  Fed.  1015 672,  710 

Wheaton  v.  Peters,  8  Pet.  591 509,  511  • 

Wheeler  v.  Johnson,  3  L.  R.  Ir.  284-1879 211 

Whitcher,  Frank  W.,  v.  Sneierson,  205  Fed.  767-1913  (D.  C.  D.  Mass.) 607 

White  V.  MeUin,  L.  R.  1895,  A.  C.  154 496 

White  V.  Merritt,  7  N.  Y.  352-1852 346 

S.  S.  White  D.  M.  Co.  v.  Mitchel,  188  Fed.  1017 314,  319,  573 

White  V.  Trowbridge,  216  Pa.  St.  11,  64  Atl.  862 56,  156 

White  Studios,  Inc.,  v.  Dreyfoos,  156  A.  D.  (N.  Y.),  762 553 

Whitehead  v.  Kitson,  119  Mass.  484-1876 482 

Whitstable  Oyster  Fishery  Co.  v.  Hayling  Fisheries,  18  R.  P.  C.  434-1901 221 

Whittier  v.  Dietz,  66  Cal.  78-1884 380 

WhitweU  V.  Continental  Tobacco  Co.,  125  Fed.  454 366 

Wiggins,  H.  B.,  Sons  Co.  v.  Cott-A-Lap  Co.,  169  Fed.  150-1909 313 

Wilcox  &  Co.,  In  re,  36  App.  D.  C.  107 435 

Wilcox  &  Gibbs  Sewing  Machine  Co.  v.  The  Gibbens  Frame,  17  Fed.  623-1883 

(C.  C.  S.  D.  N.  Y.) 278,  288 

Wilcoxen  v.  McCray,  38  N.  J.  Eq.  466-1884 85 

Wilkinson  v.  Griffith  Bros.  &  Co.,  8  Rep.  Pat.  Cas.  370 587 

Williams  v.  Adams,  8  Biss.  452-1879  (C.  C.  111.)  Fed.  Cas.  17711 400,  698 

Williams  v.  Brooks,  50  Conn.  278-1882 248,  662 

Williams  v.  Farrand,  88  Mich.  473-1891,  50  N.  W.  446,  14  L.  R.  A.  161 41 

Williams  v.  Mitchell,  106  Fed.  i68 394,  716 

Williams  v.  Wilson,  4  Sandf.  Ch.  (N.  Y.)  379-1846 60 

Williams  Soap  Co.  v.  J.  B.  Williams  Soap  Co.,  193  Fed.  384  (C.  C.  A.). .  .  .  171,  403 
Williamson  Corset  &  Brace  Co.  v.  Western  Corset  Co.,  70  Mo.  App.  424- 

1897 593 

Willis  V.  O'ConneU,  231  Fed.  1004-1916  (D.  C.  Ala.) 485 

Wilmer  v.  Thomas,  74  Md.  485-1891,  22  Atl.  403,  13  L.  R.  A.  380 49 

Wilson  V.  Hecht,  44  App.  D.  C.  33 450 

Wilson  Co.  V.  Foster,  80  Fed.  896-897 35 

Winsmore  v.  Greenbank,  Willes,  577-1745 327,  337 

Winchester  Repeating  Arms  Co.  v.  Butler  Bros.,  128  Fed.  976 573,  575,  576 

Winchester  Repeating  Arms  Co.  v.  Peters  Cartridge  Co.,  30  App.  D.  C.  505..  439 

Winsor  v.  Clyde,  9  Phila.  513-1872  (Ct.  Com.  PI.  Phila.) 231 

Wirtz  V.  Eagle  Bottling  Co.,  50  N.  J.  Eq.  164-1892,  24  Atl.  658.  .234,  259,  582, 

585,  619 


Ixvi  Table  of  Cases 

PAGE 

Withcrspoon  v.  Currie 104 

Witkop  V.  Boyce,  61  Misc.  (N.  Y.)  126-31,  aff'd  131  App.  Div.  922 318 

Witkoj)  &  Holmes  Co.  v.  Great  A.  &  P.  Tea  Co.,  69  Misc.  (N.  Y.)  90,  124  N.  Y. 

Supp.  95G 314,  318,  547 

Witthaus  V.  Braun,  44  Md.  303-1875 43 

Wolf  V.  Harris,  184  S.  W.  1139-1916 485 

Wolf  &  Sons,  N.,  V.  Lord  &  Taylor,  41  App.  D.  C.  514-1914 421 

Wolf,  B.  J.,  &  Sons  V.  New  Orleans,  etc.,  Co.,  113  La.  388-1904,  37  So.  2,  67 

L.  R.  A.  65 335 

Wolf  Bros.  &  Co.  V.  Hamilton-Brown  Shoe  Co.,  165  Fed.  413  (C.  C.  A.) 396 

Wolf  Bros.  &  Co.  V.  Hamilton-Brown  Shoe  Co.,  206  Fed.  611 726 

Wolfe  V.  Barhett  &  Lion,  24  La.  Ann.  97-1872 684 

Wolfe  V.  Burke,  56  N.  Y.  115-1874 13,  677 

Wolfe  V.  Goulard,  18  How.  Pr.  64 406 

Woodcock  V.  Guy,  33  Wash.  234 576 

Woods  Sons  Co.,  T.  B.,  v.  Valley  Iron  Works,  166  Fed.  770 570 

Woodward  v.  Lazar,  21  Cal.  449-1863 83 

Woollam  V.  Ratcliff,  1  Hem.  &  M.  259-1863 617 

Woolsey  v.  Judd,  4  Duer  (N.  Y.),  379-1855 295 

Worcester  Brewing  Co.  v.  Rueter  &  Co.,  157  Fed.  217-1907  (C.  C.  A.  1st  Cir.), 

30  App.  D.  C.  428 447,  599,  704,  727,  733,  734 

Worcester  Royal  Porcelain  Co.  v.  Locke  &  Co.,  19  R.  P.  C.  479-1902 220 

Worden  v.  CaUfornia  Fig  Syrup  Co.,  187  U.  S.  516-1902,  47  L.  ed.  282,  23 

Sup.  Ct.  161 385,  675 

Worden  &  Co.  v.  California  Fig  Syrup  Co.,  102  Fed.  334-1900 674 

Womiser  v.  Shayne,  111  111.  App.  556-1904 684,  687 

Wotherspoon  v.  Currie,  L.  R.  5  Eng.  &  Ir.  App.  508-1872 73,  202,  618,  622 

Wren  v.  Weild,  L.  R.  4  Q.  B.  730-1876 482 

Wright,  A.  D.,  v.  J.  C.  Coules,  4  Cal.  App.  343-1906 501,  503 

Wright  V.  Eisle,  86  App.  Div.  (N.  Y.)  356 512 

Wright,  In  re,  33  App.  D.  C.  510 437,  447 

Wright  Restaurant  Co.  v.  Seattle  Co.,  67  Wash.  690,  122  Pac.  Rep.  348 42 

Wrigley,  Wm.,  Jr.,  &  Co.  v.  L.  P.  Larsen,  Jr.,  Co.,  195  Fed.  568 269,  393 

Wrigley  v.  Norris,  34  App.  D.  C.  138 452,  607 

Wringley,  Wm.,  Jr.,  Co.  v.  Grove  Co.,  161  Fed.  885,  183  Fed.  99  (C.  C.  A.  2d 

Cir.) 393 

Wrisley,  A.  B.,  Co.  v.  Iowa  Soap  Co.,  104  Fed.  548 218,  385 

Wrisley  Co.  v.  Iowa  Soap  Co.,  122  Fed.  796-1903  (C.  C.  A.  8th  Cir.) 400,  625 

Wurm  v.  Webster,  21  R.  P.  C.  373 231,  232 

WyckofT,  Seamans  &  Benedict  v.  Howe  Scale  Co.,  122  Fed.  348-1903,  58  C.  C. 

A.  510 124,  125 

y 

Yale  &  Towne  Mfg.  Co.  v.  Alder,  154  Fed.  37-1907  (C.  C.  A.  2d  Cir.),  rev'g 

149  Fed.  783-1906 278,  283 

Yale  &  Towne  Mfg.  Co.  v.  Ford,  203  Fed.  707  (C.  C.  A.) 405 

Yale  &  Towne  Mfg.  Co.  v.  Restein,  196  Fed.  176 405 

Yale  &  Towne  Mfg.  Co.  v.  Worcester  Mfg.  Co.,  195  Fed.  528  (C.  C.  A.),  205 

Fed.  952 405 

Yonge  v.  Ward,  21  L.  T.  N.  S.  480 667 


Table  of  Cases  Ixvii 

PAGE 

Youatt  V.  Winyard,  IJ.  &  W.  394-1820 300,  305 

Young  V.  Macrae,  9  Jur.  N.  S.  322-1862 82 

Z 

Zanturjian  v.  Boornazian,  25  R.  I.  151 317 


THE  LAW 


OF 


UNFAIR  COMPETITION 

CHAPTER  I 
The  Legal  Doctkine  of  Unfair  Competition 

Section  1 .  Unfair  competition  is  not  a  subdivision  of  trade-mark  law. 

2.  Historical:    early    cases  of  unfair  competition   in   America  and 

England. 

3.  The  law  of  unfair  competition  curtails  freedom  of  trade,  but  only 

of  trading  that  is  unfair. 

4.  Definitions  of  unfair  competition. 

Section  1.  Unfair  Competition  is  not  a  Subdivision  of  Trade- 
mark Law.  —  In  the  digests  one  usually  finds  unfair  competition 
cases  under  the  general  head  of  trade-marks.  This  is  misleading; 
for  the  law  of  trade-marks  does  not  include  unfair  competition, 
but  rather  the  law  that  governs  trade-marks  and  infringements  of 
them  is  but  a  part  of  the  law  regulating  unfair  and  dishonest 
competition  and  trade. 

This  misconception  of  the  true  meaning  and  scope  of  the 
doctrine  of  unfair  competition  may  cause  some  to  take  issue  with 
the  writer,  on  the  correctness  of  including  in  a  book  bearing  the 
title  of  Unfair  Competition,  some  of  the  classes  of  cases  here  in- 
cluded. It  is  believed,  however,  that  the  bar  will  be  called  upon 
more  and  more  frequently  to  protect  traders  whose  business  is 
threatened  with  injury  or  destruction,  from  many  sorts  of  dis- 
honest or  unfair  competition  beside  those  arising  out  of  trade- 
marks and  trade  names.  Referring  to  the  development  of  Unfair 
Competition  law,  W.  K.  Townsend  said  in  1901:  "Not  yet  fully 
adopted  by  all  the  courts,  still  to  be  developed  in  its  application  to 
particular  circumstances  and  conditions,  this  broad  principle  of 

1 


2  The  Legal  Doctrine  of  Unfair  Competition 

business  integrity  and  common  justice  is  the  product  and  the 
triumph  of  the  development  of  the  law  of  trade-marks  in  the  last 
half  century,  and  the  bulwark  which  makes  possible  and  protects 
the  world-wide  business  reputations  common  and  growing  more 
common  in  this  new  country.  This  statement  even  after  fifteen 
years,  describes  accurately  present  day  conditions.^ 

Unfair  competition  is  not  confined  to  acts  directed  against  the 
owners  of  trade-marks  or  trade  names,  but  exists  wherever  unfair 
means  are  used  in  trade  rivalry.  Equity  looks,  not  at  the  char- 
acter of  the  business  in  which  the  parties  before  the  court  are  en- 
gaged, but  at  the  honesty  or  dishonesty  of  their  acts.  It  is  unfair 
to  pass  ofT  one's  goods  as  those  of  another  person;  it  is  unfair  to 
imitate  a  rival's  trade  name  or  label;  but  he  who  seeks  to  win 
trade  by  fair  means  or  foul  is  not  limited  to  these  methods.  He 
may  copy  and  imitate  the  actual  goods  made  or  sold  by  a  com- 
petitor, he  may  libel  or  slander  these  goods,  make  fraudulent 
use  of  a  family  name,  of  trade  secrets,  of  corporate  names,  of 
signs,  of  threats  of  action,  he  may  construct  buildings  which  are 
reproductions  of  peculiar  buildings  of  a  rival,  thus  producing  con, 
fusion  in  the  minds  of  purchasers,  which  enables  him  to  purloin 
his  rival's  trade,  and  in  a  hundred  other  unfair  ways  secure  an- 
other's trade. 

By  no  means  all  acts  done  in  competition  which  the  average 
person  would  describe  as  unfair  are  recognized  by  equity  as  ac- 
tionable. Most  of  such  acts  are  not  so  recognized.  In  the  past 
equity  courts  usually  have  not  regarded  an  act  as  actionable  un- 
der the  law  of  unfair  competition  unless  such  act  constituted  a 
passing  off  of  the  goods  of  one  person  as  those  of  another.  In 
England  unfair  competition  is  termed  '' Passing  Off,"  although  in 
other  countries  the  concept  of  it  is  much  broader  than  mere 
passing  off  of  goods. 

That  a  difference  might  exist  between  unfair  competition  from  a 
legal  standpoint  and  unfair  competition  from  a  popular  standpoint 
was  recognized  by  Congress  in  discussing  section  5  of  the  Trade 
Commission  Bill.  As  finally  enacted  it  forbids,  not  ''Unfair  Com- 
petition," but  "Unfair  Methods  of  Competition."  ^ 

Unfair  competition  does  not  necessarily  involve  the  violation 
of  any  exclusive  right  to  the  use  of  a  word,  mark,  or  symbol.    It 

^  "Two  Centuries  Growth  of  Amer-  ^  See  N.  Y.  Times  Annalist,  Octo- 

ican  Law,"  Scribners,  1901.  bar  26,  1914,  p.  240. 


Unfair  Competition  not  Subdivision  of  Trade-mark  Law    3 

may  arise  from  the  misuse  of  words,  marks,  or  symbols  which  are 
free  to  everybody  to  use  and  are  not  subject  to  exclusive  appro- 
priation by  anyone.  The  existence  of  this  right  of  action  depends 
upon  the  question  of  fact,  whether  what  is  done  in  any  special 
case  tends  to  pass  off  the  goods  of  one  man  as  being  those  of 
another,  or  tends  to  deprive  anyone  of  his  rights.  On  the  other 
hand,  a  trade-mark  action  has  always  been  supposed  to  involve 
some  exclusive  right  to  a  mark.  This  is  the  only  substantial 
distinction  between  cases  of  unfair  competition,  or  passing  off 
actions  as  they  are  called  in  England,  and  cases  of  infringement 
of  trade-marks.^  This  distinction  has  no  practical  value.  The 
action  on  a  trade-mark  and  the  action  for  unfair  competition  do 
not  differ  except  that  it  is,  of  course,  more  difficult  to  prove  that 
a  geographical  or  other  public  name  is  used  as  a  trade-mark  than 
to  prove  this  as  to  an  invented  or  fanciful  word. 

Names  or  the  words  making  up  names  may  be  descriptive,  indi- 
cating general  qualities  such  as  style,  size,  shape,  color  or  appear- 
ance, words  which  are  public  property  as  much  as  are  the  adjectives 
of  the  language ;  or  they  may  be  fanciful  and  not  at  all  descriptive, 
or  they  may  be  public  or  family  names.  It  is  possible  for  any  sort 
of  name  or  device  to  be  used  for  a  trade  purpose.  All  rival  traders 
have  an  absolute  right  to  use  such  descriptive  names;  but  if  one  of 
these  words,  by  long  association  with  the  goods  of  one  person,  has 
come  to  mean  to  the  public  his  goods  alone  and  not  such  goods  in 
general,  then  any  other  person  may  be  prohibited  from  using 
it.  A  trader  ''will  not  be  permitted,  with  intent  to  mislead  the 
public,  to  use  such  words,  marks,  or  symbols  in  such  a  manner, 
by  trade  dress  or  otherwise,  as  to  deceive  or  be  capable  of  deceiving 
the  public  as  to  the  origin,  manufacture,  or  ownership  of  the 
articles  to  which  they  are  applied;  and  the  latter  may  be  required, 
when  using  such  words,  marks,  or  symbols,  to  place  on  articles  of 
his  own  production  or  the  packages  in  which  they  are  usually  sold 
something  clearly  denoting  the  origin,  manufacture,  or  ownership 
of  such  articles,  or  negativing  any  idea  that  they  were  produced 
or  sold  by  the  former."  ^ 

The  foundation  principle  is  the  same,  in  both  trade-mark  and 
passing  off  cases.   Both  actions  rest  upon  the  same  principle,  which 

'  Above  statement  cited  Bates  Mfg.  *  Dennison  Mfg.  Co.  v.  Thomas 
Co.  V.  Bates  Numbering  Mach.  Co.,  172  Mfg.  Co.,  94  Fed.  651-59-1899  (C. 
Fed.  895.  C.  Del.). 


4  The  Legal  Doctrine  of  Unfair  Competition 

is  that  no  man  has  a  right  to  pass  off  his  goods  upon  the  public  as 
and  for  the  goods  of  another,  "  Inasmuch  as  the  testimony  shows 
unfair  competition  wliich  entitled  them  (plaintiffs)  to  an  injunc- 
tion, it  is  deemed  unnecessary  to  discuss  the  distinction  which 
seemed  to  differentiate  this  case  from  one  of  trade-mark,  pure 
and  simple  —  the  foundation  principle  upon  which  relief  is  granted 
being  substantially  the  same  and  the  like  remedy  invoked."  ^ 

Again,  "An  infringement  of  such  trade-mark  consists  in  the  use 
of  the  genuine  upon  substituted  goods  or  of  an  exact  copy  or 
reproduction  of  the  genuine,  or  in  the  use  of  an  imitation  in  which 
the  difference  is  colorable  only,  and  the  resemblance  avails  to 
mislead  so  that  the  goods  to  which  the  spurious  trade-mark  is 
affixed  are  hkely  to  be  mistaken  for  the  genuine  product;  and  this 
upon  the  ground  that  the  trade-mark  adopted  by  one  is  the  exclu- 
sive property  of  its  proprietor,  and  such  use  of  the  genuine,  or 
such  imitation  of  it,  is  an  invasion  of  his  right  of  property.  Unfair 
competition  is  distinguishable  from  the  infringement  of  a  trade- 
mark in  this:  that  it  does  not  involve  necessarily  the  question  of 
the  exclusive  right  of  another  to  the  use  of  the  name,  symbol,  or 
device.  A  word  may  be  purely  generic  or  descriptive,  and  so  not 
capable  of  becoming  an  arbitrary  trade-mark,  and  yet  there  may 
be  an  unfair  use  of  such  word  or  symbol  which  will  constitute 
unfair  competition.  Thus  a  proper  or  geographical  name  is  not 
the  subject  of  a  trade-mark,  but  may  be  so  used  by  another  un- 
fairly, producing  confusion  of  goods,  and  so  come  under  the  con- 
demnation of  unfair  trade,  and  its  use  will  be  enjoined.  The  right 
to  the  use  of  an  arbitrary  name  or  device  as  indicia  of  origin  is 
protected  upon  the  ground  of  a  legal  right  to  its  use  by  the  person 
appropriating  it."  "^ 

§  2.  Historical :  Early  Cases  of  Unfair  Competition  in  America 
and  England.  —  The  legal  doctrine  of  unfair  competition  is  a 
development  of  the  fundamental  idea  that  it  is  against  public 
policy  that  the  goods  of  one  person  should  be  offered  for  sale  or 
sold  as  those  of  another.  Very  few  cases  dealing  with  the  ques- 
tion were  decided  in  England  or  America  prior  to  1850.  At  first 
this  idea  was  applied  only  to  what  were  then  termed  trade-mark 
cases. 

6  Scriven  v.  North,  134  Fed.  366-  ^  G.  W.  Cole  Co.  v.  American  Cement 
80-1904  (C.  C.  A.  4th  Cir.);  67  C.C.  Co.,  130  Fed.  703-1904,  at  p.  705 
A.  348.  (C.  C.  A.  7th  Cir.). 


Historical:  Early  Cases  of  Unfair  Competition       5 

One  of  the  first  cases  involving  a  trade-mark  or  trade  name  in 
which  the  courts  in  America  granted  an  injunction  was  decided 
in  1844,  by  Judge  Sto^3^  This  was  the  ' '  Taylor's  Persian  Thread  " 
case7  The  growth  of  the  doctrine  has  been  thus  described. 
"During  this  period  of  growth  the  courts,  at  first  inclined  to 
develop  the  law  along  narrow  and  technical  lines,  have  come  to 
see  more  and  more  clearly  the  fundamental  principles  upon  which 
to  act  in  extending  this  protection  of  the  law  to  the  achievements 
of  business.  Now  the  technical  doctrines  are  less  and  less  em- 
ployed and  one  simple  just  rule  is  invoked.  The  law  of  trade- 
marks is  disappearing  in  a  broader  principle  which  prohibits 
unfair  trade."  ^ 

A  similar  statement  is  made  in  Church  &  Dwight  Co.  v.  Russ:  ^ 
''The  tendency  of  the  courts  at  the  present  time  seems  to  be  to 
restrict  the  scope  of  the  law  applicable  to  technical  trade-marks, 
and  to  extend  its  scope  in  cases  of  unfair  competition." 

The  cases  given  below  show  in  part  the  beginnings  of  the 
doctrine.  In  1742  Lord  Hardwicke  refused  an  injunction  in 
Blanchard  v.  Hill.^^  This  was  an  action  to  restrain  the  defendant 
from  using  the  mogul  stamp  on  his  cards.  The  plaintiff,  in  con- 
formity with  the  charter  granted  to  the  Cardmakers'  Company  by 
King  Charles  I,  had  appropriated  the  stamp  to  himself,  and  so 
considered  the  sole  right  to  be  in  him.  His  lordship  said:  "Every 
particular  trader  has  some  particular  mark  or  stamp ;  but  I  do  not 
know  any  instance  of  granting  an  injunction  here,  to  restrain  one 
trader  from  using  the  same  mark  with  another;  and  I  think  it 
would  be  of  mischievous  consequence  to  do  it."  He  then  referred 
to  a  case  cited  in  Southern  v.  How,^^  where  an  action  was  brought 
by  a  cloth  worker  against  another  of  the  same  trade  for  using  the 
same  mark,  and  judgment  was  given  that  the  action  would  lie;  but 
added,  "it  was  not  the  single  act  of  making  use  of  the  mark  that 
v/as  sufficient  to  maintain  the  action,  but  doing  it  with  a  fraud- 
ulent design,  to  put  off  bad  cloths  by  this  means,  or  to  draw  away 
customers  from  the  other  clothier." 

Lord  Eldon  in  Hogg  v.  Kirby,^^  a  case  decided  in  1803,  speaks 

'  Tmjlor  V.  Carpenter,  3  Story,  458,  » 99    Fed.     276-78-1900     (C.     C. 

Cox.  Am.  T.  M.  Cases,  p.  14.  Ind.). 

8  "  Two  Centuries  Growth  of  Amer-  ">  2  Atk.  484-1742. 

ican  Law,"  Scribners,  1901,  of  Yale,  "  Poph.  144. 

p.  436.  12  8  Vesey  Jr.  215-1803. 


6  The  Legal  Doctrine  of  Unfair  Competition 

of  "fair  competition:"  and  it  is  doubtful  if  the  term  "fair  com- 
petition" or  ''unfair  competition"  had  been  used  prior  to  that 
time.  The  body  of  law  now  referred  to  as  the  doctrine  of  unfair 
competition  has  been  but  recently  known  under  that  name.  This 
is  shown  by  the  fact  that  Mr.  Cox,  in  his  well-known  "Manual  of 
Trade-Mark  Cases,"  published  in  1892,  refers  in  his  index  to  but 
eight  cases  as  unfair  competition  cases,  although  many  of  the 
cases  he  includes  in  the  volume  are  now  frequently  cited  as  laying 
down  the  fundamental  rules  of  that  law.  "The  original  foun- 
dation of  the  whole  law  is  this,  that  when  one  knowing  that 
goods  are  not  made  by  a  particular  trader  sells  them  as  and  for  the 
goods  of  that  trader,  he  does  that  which  injures  that  trader.  At 
first  it  was  put  upon  the  ground  that  he  did  so  when  he  sold 
inferior  goods  as  and  for  the  trader's;  but  it  is  established  alike  at 
law  ^^  and  in  equity,^*  that  it  is  an  actionable  injury  to  pass  off 
goods  not  known  to  be  the  plaintiff's  as  and  for  the  plaintiff's,  even 
though  not  inferior."  ^^ 

The  case  of  Singleton  v.  Bolton  ^'''  decided  in  1783  shows  the 
use  of  these  principles  at  an  early  date. 

Judge  Duer  in  Amoskeag  Mfg.  Co.  v.  Spear  ^^  founded  the  doc- 
trine of  unfair  competition  on  Blofield  v.  Payne,^^  Crawshay  v. 
Thompson,^^  Knott  v.  Morgan,"^^  Croft  v.  Day.^^  These  cases  are 
summarized  below: 

"  Blofield  V.  Payne,  4  B.  &  Ad.  410-  would  be  a  fraud  for  which  an  ac- 

1833.  tion  would  he.     But  here  both  the 

1*  Edelsten  v.  Edclslen,  1  De  G.  J.  plaintiff  and  defendant  use  the  name 

&  S.  185-1863.  of  the  original  inventor,  and  no  evi- 

**  Singer  Mfg.  Co.  v.  Loog,  L.  R.  dence    was   given   of   the    defendant 

8  App.  Cas.  15-1882,  at  p.  29.  having  sold  it  as  if  prepared  by  the 

"  3  Dougl.  293.  plaintiff.    The  only  ground  on  which 

"Thomas  Singleton,  the  plaintiff's  the  action  could  have  been  maintained 

father,   sold  a  medicine   called   'Dr.  was  that  of  property  in  the  plaintiff, 

Johnson's    Yellow    Ointment.'      The  which  was  not  pretended,  there  being 

plaintiff,  after  his  father's  death,  con-  no  patent,  nor  any  letters  of  adminis- 

tinued  to  sell  the  medicine,  marked  tration. 

in   the   same   way.     The   defendant  "  Rule  discharged." 

also  sold  the  medicine,  with  the  same  "  2  Sandf.  N.  Y.  599-1849.      • 

mark,  and  for  that  injury  the  present  '« 4  B.  &  Ad.  410-1833. 

action  was  brought.     *    *    *    Lord  >»  4  Man.  &  Gr.  357-1842. 

Mansfiold  said,  that  if  the  defendant  ^o  2  Keen,  213-1836. 

had  sold  a  medicine  of  his  own,  under  ''^  7  Beav.  84-1843. 
the   plaintiff's   name   or   mark,    that 


Historical:  Early  Cases  of  Unfair  Competition        7 

Blofield  V.  Payne  was  an  action  on  the  case,  before  a  jury,  for 
damages,  decided  in  1833.  Plaintiff  made  hones,  which  he  sold 
wrapped  in  a  peculiar  envelope,  which  served,  he  alleged,  to  dis- 
tinguish his  hones  from  other  kinds.  He  acquired  a  great  reputa- 
tion for  the  quality  of  his  hones.  Defendant  used  similar  wrappers 
and  words  on  them  which  denoted  they  were  of  the  plaintiff's 
make.  Plaintiff  recovered  1  farthing  damage;  and  on  appeal  the 
verdict  was  upheld.  The  opinion  was  in  substance  as  follows:  The 
act  of  the  defendants  was  a  fraud  against  the  plaintiff.  The 
defendants  used  plaintiff's  envelope  and  pretended  it  was  their 
own;  they  had  no  right  to  do  that,  and  the  plaintiff  was  entitled 
to  recover  some  damages  in  consequence. 

Crawshmj  v.  Thompson.^^  The  gist  of  this  action  was  selling 
iron  made  by  the  defendants  as  and  for  iron  of  the  plaintiff's 
manufacture;  that  the  plaintiff  having  used  a  certain  mark  in 
the  manufacture  of  his  iron,  the  defendants  knowingly  made  and 
sold  their  iron  with  a  mark,  imitating  that  used  by  the  plaintiff,  in 
order  to  denote  that  such  iron  was  manufactured  by  the  plaintiff. 
The  argument  in  effect  amounts  to  this,  —  if  the  defendants  sold 
their  iron  as  and  for  the  plaintiff's,  whatever  may  have  been  their 
motive  for  so  doing,  they  are  liable.  The  opinion  was  in  part  as 
follows : 

"There  is  an  early  case  in  illustration  of  this  principle,  cited 
by  Doderidge,  J.,  in  Southern  v.  How,  to  this  effect,  as  stated  in 
Popham,  pp.  143-4.  'An  action  upon  the  case  was  brought  in 
the  Common  Pleas  by  a  clothier,  that,  whereas  he  had  gained 
great  reputation  for  his  making  of  his  cloth,  by  reason  whereof  he 
had  great  utterance,  to  his  great  benefit  and  profit;  and  that  he 
used  to  set  his  mark  to  his  cloth;  and  another  perceiving  it,  used 
the  same  mark  to  his  ill-made  cloth  on  purpose  to  deceive  him; 
and  it  was  resolved  that  the  action  did  well  lie.'  The  same  case 
is  cited  also  in  Cro.  Jac.  471;  but  it  is  there  said  that  the  action 
was  brought  by  him  who  bought  the  cloth;  whereas,  in  Popham, 
the  action  is  said  to  have  been  brought  by  the  manufacturer,  and 
the  gist  of  the  action  appears  to  have  been  the  use  of  his  mark  '  on 
purpose  to  deceive ' "  (id.  p.  385). 

"Can  it  be  contended  that  the  mere  use  of  a  similar  mark  will 
give  a  right  of  action?  I  do  not  know  that  a  man  can  have  an 
abstract  right  to  use  any  particular  mark;  but  long  user  in  a 
22  4  Man.  &  Gr.  357-1842. 


8  The  Legal  Doctrine  of  Unfair  Competition 

trade  of  a  mark  may  produce  a  general  impression  that  goods 
bearing  such  mark  are  of  a  particular  manufacture.  The  notice 
here,  although  it  was  argued  that  it  ought  to  have  determined  the 
case  in  favor  of  the  plaintiff,  cannot  alter  the  legal  rights  of  the 
parties.  Millington  v.  Fox,"^^  which  was  relied  upon,  does  not 
establish  that  doctrine.  What  is  the  notice  here?  It  is  to  the 
effect  that  the  defendants  were  using  a  mark  similar  to  that  used 
by  the  plaintiff.  But  such  a  notice  is  not  equivalent  to  knowledge ; 
as  the  defendants  might  dispute  the  resemblance;  or  they  might 
admit  the  reseml)lance,  and  yet  insist  that  they  had  no  intention 
of  passing  off  their  goods  as  the  plaintiff's  (id.  386). ^^ 

In  Knott  V.  Morgan,  ^^^  the  plaintiff  ran  a  conveyance  company, 
which  marked  its  buses  "Conveyance  Company"  and  "London 
Conveyance  Company."  Defendant  began  to  run  over  route 
used  by  plaintiff  a  bus  on  which  were  painted  these  same  words 
in  similar  characters  and  on  the  same  parts  of  the  omnibuses,  and 
he  also  imitated  the  livery  of  the  plaintiff's  employees.  The  court 
said:  "I  have  not  the  least  doubt  that  the  defendant  did  in- 
tend to  induce  the  public  to  believe  that  the  omnibus  which  he 
painted  and  appointed,  so  as  to  resemble  the  carriages  of  the  plain- 
tiffs, was  in  fact,  an  omnibus  belonging  to  the  plaintiffs.  *  *  * 
They  had  a  right  to  call  upon  this  court  to  restrain  the  defendant 
from  fraudulently  using  precisely  the  same  words  and  devices 
which  they  have  taken  for  the  purpose  of  distinguishing  their 
property,  and  thereby  depriving  them  of  the  fair  profits  of  their 
business  by  attracting  custom  on  the  false  representation  that 
carriages,  really  the  defendant's,  belong  to,  and  are  under  the 
management  of,  the  plaintiffs"  (id.  p.  219). 

In  Croft  v.  Day,~^  Day's  father  began  in  1801  with  one  Mar- 
tin to  make  blacking.  Day,  senior,  and  Martin  died  and  Day's 
executors,  one  of  whom  was  the  plaintiff,  carried  on  the  business, 
and  sought  to  prevent  defendant  from  making  blacking.  The 
court  said  in  substance,  that  the  accusation  made  against  this 
defendant  is  that  he  is  selling  goods,  under  form  and  symbols  of 
such  a  nature  and  character  as  will  induce  the  pubUc  to  believe 
that  he  is  selling  the  goods  which  are  manufactured  at  the  manu- 
factory belonging  to  the  testator  in  this  case.    "It  has  been  very 

23  3  Myl.  &  Cr.  338-1838.  "  2  Koon,  213-1836. 

24  Crawshay  v.  Thoynpson,  4  Man.  ^a  7  Beav.  84-1843. 
&  Gr.  357-1842. 


Historical:  Early  Cases  of  Unfair  Competition        9 

correctly  said,  that  the  principle,  in  these  cases,  is  this:  That  no 
man  has  a  right  to  sell  his  own  goods  as  the  goods  of  another. 
You  may  express  the  same  principle  in  a  different  form,  and  say 
that  no  man  has  a  right  to  dress  himself  in  colors,  or  adopt  and 
bear  symbols,  to  which  he  has  no  peculiar  or  exclusive  right,  and 
thereby  personate  another  person  for  the  purpose  of  inducing  the 
pubhc  to  suppose,  either  that  he  is  the  other  person,  or  that  he  is 
connected  with  and  selling  the  manufacture  of  such  other  person, 
while  he  is  really  selling  his  own.  It  is  perfectly  manifest,  that 
to  do  these  things  is  to  commit  a  fraud,  and  a  very  gross  fraud. 
*  *  *  The  right  which  any  person  may  have  to  the  protection 
of  this  court,  does  not  depend  upon  any  exclusive  right  which  he 
may  be  supposed  to  have  to  a  particular  name,  or  to  a  particular 
form  of  words.  His  right  is  to  be  protected  against  fraud,  and 
fraud  may  be  practiced  against  him  by  means  of  a  name,  though 
the  person  practicing  it  may  have  a  perfect  right  to  use  that 
name,  provided  he  does  not  accompany  the  use  of  it  with  such 
other  circumstances  as  to  effect  a  fraud  upon  others." 

**It  is  perfectly  manifest,  that  two  things  are  required  for  the 
accomplishment  of  a  fraud  such  as  is  here  contemplated.  First, 
there  must  be  such  a  general  resemblance  of  the  forms,  words, 
symbols,  and  accompaniments  as  to  mislead  the  public.  And, 
secondly,  a  sufficient  distinctive  individuality  must  be  preserved, 
so  as  to  procure  for  the  person  himself  the  benefit  of  that  deception 
which  the  general  resemblance  is  calculated  to  produce.  To  have  a 
copy  of  the  thing  would  not  do,  for,  though  it  might  mislead  the 
public  in  one  respect,  it  would  lead  them  back  to  the  place  where 
they  were  to  get  the  genuine  article,  an  imitation  of  which  is  im- 
properly sought  to  be  sold.  For  the  accomplishment  of  such  a 
fraud  it  is  necessary,  in  the  first  instance,  to  mislead  the  public, 
and  in  the  next  place,  to  secure  a  benefit  to  the  party  practicing 
the  deception  by  preserving  his  own  individuality."  *  *  * 
''My  decision  does  not  depend  upon  any  peculiar  or  exclusive 
right  the  plaintiffs  have  to  use  the  names  Day  and  Martin,  but 
upon  the  fact  of  the  defendant  using  these  names  in  connection 
with  certain  circumstances,  and  in  a  manner  calculated  to  mislead 
the  public,  and  to  enable  the  defendant  to  obtain,  at  the  expense 
of  Day's  estate,  a  benefit  for  himself,  to  which  he  is  not,  in  fair 
and  honest  dealings,  entitled.  Such  being  my  opinion,  I  must 
grant  the  injunction  restraining  the  defendant  from  carrying  on 


10         The  Legal  Doctrine  of  Unfair  Competition 

that  deception.  He  has  a  right  to  carry  on  the  business  of  a 
blacking  manufacturer  honestly  and  fairly ;  he  has  a  right  to  the 
use  of  his  own  name ;  I  will  not  do  anything  to  debar  him  from  the 
use  of  that,  or  any  other  name  calculated  to  benefit  himself  in  an 
honest  way;  but  I  must  prevent  him  from  using  it  in  such  a  way  as 
to  deceive  and  defraud  the  iniblic,  and  obtain  for  himself,  at  the 
expense  of  the  plaintiffs,  an  undue  and  improper  advantage" 
(id.  pp.  88-90). 

Another  early  case  of  this  sort  is  Hogg  v.  Kirby,^"^  decided  in 
1803  by  Lord  Eldon,  which  lays  down  the  fundamental  rules  of 
the  law  we  now  know  as  the  law  of  unfair  competition.  Hogg  was 
publisher  of  the  "Wonderful  Magazine."  A  dispute  arose  as  to 
altering  the  title  of  it  and  Kirby  refused  to  allow  his  name  to  be 
used  longer  as  publisher.  Later,  plaintiff  issued  hand  bills  saying 
he  would  thereafter  publish  the  magazine  and  began  to  do  so. 
Thereupon  Kirby  and  another  began  to  publish  a  periodical 
under  a  similar  title  as  a  ''New  Series  Improved."  Plaintiff  asked 
that  defendants  be  enjoined  from  selling  their  publication  and 
from  printing  any  future  number  under  the  same  or  a  similar 
title  or  using  the  design  of  plaintiff's  magazine  and  an  account. 
Lord  Eldon  said:  "But  the  question  is,  whether  he  has  not  pub- 
lished this  work,  not  as  his  original  work,  but  as  the  continuation 
of  the  work  of  another  person.  Then  what  is  the  consequence  in 
law  and  equity?  If  that  question  is  determined  in  the  affirmative, 
a  court  of  equity  in  these  cases  is  not  content  with  an  action  for 
damages;  for  it  is  nearly  impossible  to  know  the  extent  of  the 
damage ;  and  therefore  the  remedy  here,  though  not  compensating 
the  pecuniary  damage  except  by  an  account  of  the  profits,  is  the 
best:  the  remedy  by  an  injunction  and  account"  (p.  223).  "In 
this  case,  protesting  against  the  argument,  that  a  man  is  not 
at  liberty  to  do  anything  which  can  affect  the  sale  of  another 
work  of  this  kind,  and  that,  because  the  sale  is  affected,  therefore 
there  is  an  injury  (for  if  there  is  a  fair  competition  by  another 
original  work,  really  new,  be  the  loss  what  it  may,  there  is  no 
damage  or  injury),  I  shall  state  the  question  to  be,  not  whether 
this  work  is  the  same,  but,  in  a  question  between  these  parties, 
whether  the  defendant  has  not  represented  it  to  be  the  same;  and 
whether  the  injury  to  the  plaintiff  is  not  as  great,  and  the  loss 
accruing  ought  not  to  be  regarded  in  equity  upon  the  same  prin- 
"8  Vesey  Jr.  215;  ISO]. 


The  Law  Curtails  only  Trade  that  is  Unfair       11 

ciples  between  them,  as  if  it  was  in  fact  the  same  work.  Upon  the 
point,  whether  the  work  was  in  fact  meant  to  be  represented  to  the 
pubhc  as  the  same,  I  do  not  say,  that  is  not  a  question  proper  for  a 
jury.  But  I  must  act  upon  the  inference  from  the  circumstances; 
and  it  is  impossible  not  to  say,  till  this  is  better  explained,  an 
intention  does  appear  both  upon  the  transaction  as  to  the  fifth 
number  and  the  other  circumstances,  in  some  degree  upon  the 
appearance  of  the  outside,  in  a  great  degree  upon  the  first  page, 
the  index,  and  the  promised  contents,  to  state  this  as  a  continua- 
tion of  the  former  work,  in  a  new  series  indeed.  I  am  not  here  to 
speculate  upon  the  probable  consequences  of  such  conduct;  for  I 
have  the  actual  consequences,  as  far  as  fair  reasoning  can  deter- 
mine, that  out  of  2,000  purchasers  1,800  have  bought  this  as  part 
of  the  old  work.  The  point,  where  he  who  carries  his  work  into  the 
world  as  that  of  another  person,  shall  not  as  between  them  be 
considered  as  publishing  that  work,  if  the  consequences  are  the 
same,  is  new,  and  therefore  fit  to  be  discussed  elsewhere  as  well  as 
here.  I  must  incur  the  hazard  of  occasioning  finally  some  in- 
jurious consequences  to  one  party  or  the  other  "  (id.  pp.  225-6). 

An  early  edition  of  Sebastian  on  Trade-Marks  has  a  chapter  on 
"Cases  Analogous  to  those  of  Trade-Mark,"  Browne  on  Trade- 
Marks,  contains  one  on  ''Rights  Analogous  to  Those  of  Trade- 
Marks."  These  chapters  deal  with  cases  now  known  as  Unfair 
Competition  cases. 

It  is,  then,  in  reality  the  name,  unfair  competition,  that  is 
new,  not  the  theory  bearing  the  name;  and  relief  formerly  given, 
as  the  courts  have  so  often  expressed  it,  "on  principles  similar  to 
those  of  trade-mark  cases"  was  relief  based  on  the  principles  of 
unfair  competition. 

§  3.  The  Law  of  Unfair  Competition  Curtails  Freedom  of  Trade, 
but  only  of  Trading  that  is  Unfair. — The  law  of  unfair  competition 
might  seem  to  have  the  effect  of  limiting  the  rights  enjoyed  by  all 
men  to  trade  freely  with  each  other.  But  the  restrictions  imposed 
by  it  are  not  imposed  upon  traders  alone,  but  equally  on  all  other 
citizens.  The  right  to  trade  is  not  an  absolute  right,  but  a  qualified 
one.  Whether  a  man  be  a  trader  or  not  he  is  not  justified  in  damag- 
ing another's  business  or  profession  by  fraudulent  methods,  by 
threats,  interference  with  contract,  libel  or  slander  of  goods, 
obstruction,  or  unfair  methods  of  any  sort.  It  is  the  policy  of  the 
law  to  encourage  fair  trade  in  every  way.     "We  have  then  to 


12         The  Legal  Doctrine  of  Unfair  Competition 

inquire  whether  mere  competition,  directed  by  one  man  against 
another,  is  ever  unlawful.  It  was  argued  that  the  plaintiffs  have  a 
legal  right  to  carry  on  their  trade,  and  that  to  deprive  them  of  that 
right  by  any  means  is  a  wrong.  But  the  right  of  the  plaintiffs  to 
trade  is  not  an  absolute  but  a  qualified  right,  a  right  conditioned 
by  the  like  right  in  the  defendants  and  all  Her  Majesty's  subjects, 
and  a  right  therefore  to  trade  subject  to  competition.  Now,  I 
know  no  Hmits  to  the  right  of  competition  in  the  defendants  —  I 
mean,  no  hmits  in  law.  I  am  not  speaking  of  morals  or  good 
manners.  To  draw  a  line  between  fair  and  unfair  competition, 
between  what  is  reasonable  and  unreasonable,  passes  the  power 
of  the  Court.  Competition  exists  when  two  or  more  persons  seek 
to  possess  or  to  enjoy  the  same  thing:  it  follows  that  the  success 
of  one  must  be  the  failure  of  another,  and  no  principle  of  law 
enables  us  to  interfere  with  or  to  moderate  that  success  or  that 
failure  so  long  as  it  is  due  to  mere  competition.  I  say  mere 
competition,  for  I  do  not  doubt  that  it  is  unlawful  and  actionable 
for  one  man  to  interfere  with  another's  trade  by  fraud  or  mis- 
representation, or  by  molesting  his  customers,  or  those  who  would 
be  his  customers,  whether  by  physical  obstruction  or  moral 
intimidation."  ^^ 

§  4.  Definitions  of  Unfair  Competition.  —  The  fundamental 
rule  is  that  one  man  has  no  right  to  palm  off  his  own  goods 
as  the  goods  of  a  rival  trader,  and  "he  cannot,  therefore," 
in  the  language  of  Lord  Langdale  in  Perry  v.  Truefitt,^  "he 
allowed  to  use  names,  marks,  letters,  or  other  indicia,  by  which 
he  may  induce  purchasers  to  believe  that  the  goods  which  he 
is  selhng  are  the  manufacture  of  another  person."  Referring  to 
the  above.  Lord  Herschell,  in  Reddaway  v.  Banham,^°  said:  "It 
is,  in  my  opinion,  this  fundamental  rule  which  governs  all  cases." 

"Irrespective  of  the  technical  question  of  trade-mark,  the 
defendants  have  no  right  to  dress  their  goods  up  in  such  man- 
ner as  to  deceive  an  intending  purchaser,  and  induce  him  to 
beheve  he  is  buying  those  of  the  plaintiffs.  Rival  manufacturers 
may  lawfully  compete  for  the  patronage  of  the  pubhc  in  the 
quahty  and  price  of  their  goods,  in  the  beauty  and  tastefulness 
of  their  inclosed  packages,  in  the  extent  of  their  advertising,  and 
in  the  employment  of  agents,  but  they  have  no  right,  by  imitative 

*8  Mogul  SS.  Co.  V.  McGregor,  Gow  "  q  Beav.  6G-73-1842. 

&  Co.,  L.  R.  23  Q.  B.  598-025-1889.  =>o  189G-App.  Cas.  199-209. 


Definitions  of  Unfair  Competition  13 

devices,  to  beguile  the  public  into  buying  their  wares  under  the 
impression  they  are  buying  those  of  their  rivals."  ^^ 

"The  essence  of  a  wrong  in  unfair  competition  consists  in  the 
sale  of  the  goods  of  one  manufacturer  or  vendor  for  those  of 
another,  and  if  defendant  so  conducts  its  business  as  not  to  palm 
off  its  goods  as  those  of  complainant  the  action  fails."  ^^ 

''An  act  of  competition,  otherwise  unobjectionable,  done,  not 
for  the  purpose  of  competition  but  with  intent  to  injure  a  rival 
in  his  trade,  is  not  an  act  done  in  an  ordinary  course  of  trade,  and 
therefore  is  actionable  if  injury  ensue."  ^^ 

"Everyone  has  the  right  to  use  and  enjoy  the  rays  of  the 
sun,  but  no  one  may  lawfully  focus  them  to  burn  his  neighbor's 
house.  *  *  *  Everyone  has  the  right  to  use  pen  and  paper, 
but  no  one  may  apply  them  to  the  purpose  of  defrauding  his 
neighbor  of  his  property,  or  making  counterfeit  money,  or  of 
committing  forgery."  ^^ 

"Competition  in  business  is  justifiable  and  desirable;  but  a 
business  built  up  by  one  man  by  the  use  of  peculiar  packages  and 
names,  should  not  be  appropriated  by  another  by  contrivances 
which,  although  not  strictly  within  the  rules  of  liabihty,  yet  are 
designed  to  accomplish  a  purpose  equally  injurious.  Persons  thus 
situated  are  not  regarded  with  favor  by  a  court  of  equity."  ^^ 

"If  the  same  evil  results  are  accomplished  by  the  acts  prac- 
ticed by  this  defendant  which  would  be  accomplished  by  an  adop- 
tion of  plaintiff's  name,  why  should  equity  smile  upon  the  one 
practice  and  frown  upon  the  other?  Upon  what  principle  of  law 
can  a  court  of  equity  say,  if  you  cheat  and  defraud  your  competitor 
in  business  by  taking  his  name,  the  court  will  give  relief  against 
you,  but  if  you  cheat  and  defraud  him  by  assuming  a  disguise  of  a 
different  character  your  acts  are  beyond  the  law?  Equity  will  not 
concern  itself  about  the  means  by  which  fraud  is  done.  It  is  the 
results  arising  from  the  means,  it  is  the  fraud  itself,  with  which  it 
deals. ' '    ' '  The  foregoing  principles  of  law  do  not  apply  alone  to  the 

"  Coats  V.  Merrick  Thread  Co.,  149  "  Lord   Esher   (dissenting),   Mogul 

U.  S.  562-1892,  at  p.  566;  37  L.  Ed.  SS.  Co.  v.  McGregor,  Gow  &  Co.,  L.  R. 

847;  13  Sup.  Ct.  966.    See  also  Den-  23  Q.  B.  D.  598-609-1889. 

nison  Mfg.  Co.  v.  Thomas  Mfg.  Co.,  ^^  Shaver   v.    Heller    &    Merz    Co., 

94  Fed.  651-1899  (C.  C.  Del.).  108  F.  R.  821-827-1901   (C.  C.  A. 

32  Howe  Scale  Co.  v.  Wyckoff,  Sea-  8th  Cir.) ;  65  L.  R.  A.  878. 

mans  &  Benedict,  198  U.  S.  118-140-  "  Church,  J.,  in  Wolfe  v.  Burke,  56 

1905;  49  L.  Ed.  972;  25  Sup.  Ct.  609.  N.  Y.  115-122-1874. 


14         The  Legal  Doctrine  of  Unfair  Competition 

protection  of  parties  having  trade-marks  and  trade  names.  They 
reach  away  beyond  that,  and  apply  to  all  cases  where  fraud  is 
practiced  by  one  in  securing  the  trade  of  a  rival  dealer;  and  those 
ways  are  as  many  and  as  various  as  the  ingenuity  of  the  dishonest 
schemer  can  invent."  ^^ 

"The  modes  in  which  goods  may  be  passed  off  as  and  for  the 
plaintiff's  vary.  The  most  usual  is  where  a  particular  mark  on  the 
goods  or  on  the  packages  in  which  they  are  sold  has  been  used  to 
denote  that  they  are  made  by  a  particular  firm  to  such  an  extent 
that  it  is  understood  in  the  market  to  bear  that  meaning.  The 
law  as  to  those  trade-marks  is  now  regulated  by  statutes,  but 
before  there  was  any  legislation  on  the  subject  it  was  well  settled 
that  when  anyone  adopted  a  mark  so  closely  resembUng  the  trade- 
mark of  the  plaintiff  that  it  would  be  likely  to  be  mistaken  for  it, 
and  put  it  on  his  goods  and  sold  them,  knowing  that  though  the 
persons  to  whom  he  sold  them  were  well  aware  that  they  were  not 
the  plaintiff's  make,  yet  that  they  were  meant  to  be  sold  to  others 
who  would  see  only  the  trade-mark,  and  were  hkely  to  be  deceived 
by  its  resemblance  to  that  of  the  plaintiff,  he  might  be  properly 
found  to  have  knowingly  and  fraudulently  sold  the  goods  as  and 
for  the  plaintiff's  goods:  ^^  And,  so  far,  there  was  no  difference 
between  law  and  equity.  But  at  law  it  was  necessary  to  prove 
that  an  injury  had  been  actually  done.  In  equity  it  was  enough 
to  show  that  the  defendant  threatened  to  do,  and  would,  if  not 
prevented,  do  that  injury.  *  *  *"  "There  is  another  way 
in  which  goods  not  the  plaintiff's,  may  be  sold  as  and  for  the 
plaintiff's.  A  name  may  be  so  appropriated  by  user,  as  to  come  to 
mean  the  goods  of  the  plaintiff,  though  it  is  not,  and  never  was, 
impressed  on  the  goods  or  on  the  packages  in  which  they  are  con- 
tained, so  as  to  be  a  trade-mark,  properly  so  called,  or  within  the 
recent  statutes.  Where  it  is  established  that  such  a  trade  name 
bears  that  meaning,  I  think  the  use  of  that  name,  or  one  so  nearly 
resembling  it  as  to  be  likely  to  deceive,  as  apphcable  to  goods  not 
the  plaintiff's,  may  be  the  means  of  passing  off  those  goods  as 
and  for  the  plaintiff's,  just  as  much  as  the  use  of  a  trade-mark;  and 
I  think  the  law  (so  far  as  not  altered  by  legislation)  is  the  same."  ^* 

"He  (competitor  in  business)  must  not,  by  any  deceitful  or 

5'  Weinstock,  Lubin  &  Co.  v.  Marks,  "  Citing  Sykes  v.  Sykes,  3  B.  &  C. 

109  Cal.  529-40-1895;  42  Pac.   142;      541-1824. 
30  L.  R.  A.  182.  38  Singer  Mfg.  Co.  v.  Loog,   L.  R. 


Definitions  of  Unfair  Competition  15 

other  practice,  impose  on  the  pubhc,  and  he  must  not  by  dressing 
himself  in  another  man's  garments,  and  by  assuming  another 
man's  name,  endeavor  to  deprive  that  man  of  his  own  individual- 
ity and  thus  despoil  him  of  the  gains  to  which,  by  his  industry  and 
skill,  he  is  fairly  entitled."  ^^ 

''If  a  person  had  established  a  business  at  a  particular  place, 
from  which  he  has  derived,  or  may  derive,  profit,  and  has  at- 
tached to  that  business  a  name  indicating  to  the  pubUc  where  or 
in  what  manner  it  is  carried  on,  he  has  acquired  a  property  in  the 
name  which  will  be  protected  from  invasion  by  a  court  of  equity, 
on  principles  analogous  to  those  which  are  applied  in  case  of  the 
invasion  of  a  trade-mark."  ^° 

"Unfair  competition  consists  essentially  in  the  conduct  of  a 
trade  or  business  in  such  a  manner  that  there  is  an  express  or 
implied  representation  that  the  goods  or  business  of  one  man  are 
the  goods  or  business  of  another."  ^^ 

''The  imitation  of  the  index  sheets  would  deceive  the  ordi- 
nary purchaser,  and  the  appellee  had  a  purpose  that  such  effect 
should  result.  This  constitutes  unfair  competition,  notwith- 
standing that  the  merchant  purchasing  from  the  manufacturer 
may  not  have  been  deceived."  ^^ 

"Unfair  competition  may  be  defined  as  passing  off,  or  at- 
tempting to  pass  off,  upon  the  public  the  goods  or  business  of  one 
man  as  being  the  goods  or  business  of  another."  ^^ 

"Notwithstanding  plaintiff  had  no  real  or  legal  trade-mark, 
if  the  defendant  had  intentionally  sunulated  the  peculiar  device 
or  symbol  employed  by  plaintiff  on  his  labels,  and  such  simulation 
was  calculated  to  deceive  ordinarily  prudent  persons,  and  did 
deceive  such  persons,  the  plaintiff  would  be  entitled  to  protection 
against  the  consequence  of  such  deception,  not  because  of  his 
device  or  symbol  being  a  trade-mark  in  the  legal  sense  of  that 
term,  but  because  of  the  fraud  and  deception  practiced  by  the 
defendant  upon  the  plaintiff  and  the  pubUc."  ^^ 

8  App.  Cas.  15-30-32-1882.     Above  *'  28  Am.  &  Eng.  Encyc.  345,  2d  ed. 

statement  in  the  text  cited,  Bates  Mfg.  *^  Globe  Wernicke  Co.  v.  Brown  & 

Co.  V.  Bates  Numbering  Mach.  Co.,  172  Besly,   121  F.  R.  90-1902,  at  p.  92 

Fed.  895.  (C.  C.  A.  7th  Cir.). 

^^  Howard   v.   Henriques,   3   Sandf.  "28  Am.  &  Eng.  Encyc.  409,  2d 

(N.  Y.)  725-27-1851.  ed. 

*°  Harper  v.  Pearson,  3  L.   T.  N.  "  ^//f  &   Co.   v.   Radatn,   77  Tex. 

S.  547-49-1861.  530-41-1890;  14  S.  W.  164;  9  L.  R. 


16         The  Legal  Doctrine  of  Unfair  Competition 

"La  concurrence  deloyale  c'est  I'acte  pratique  de  mauvaise 
foi  a  I'effet  de  produire  une  confusion  entre  les  produits  de  deux 
fabricants,  ou  de  deux  commerfants,  ou  qui,  sans  produire  de 
confusion,  jette  le  discredit  sur  un  ^tablissement  rival."  ^^ 

"There  is  no  hard  and  fast  rule  by  which  it  can  be  determined 
when  the  court  will  interfere  by  injunction  to  prevent  what  is 
practically  a  fraud  upon  a  person  engaged  in  business  by  unfair 
methods  of  business.  Each  case  must  depend  upon  its  own  facts^ 
but  where  it  is  clearly  established  that  an  attempt  is  being  made 
by  one  person  to  get  the  business  of  another  by  any  means 
that  involves  fraud  or  deceit,  a  court  of  equity  will  protect  an 
honest  trader  and  restrain  a  dishonest  one  from  carrying  out  his 
scheme."  ^^ 

This  definition  was  approved  in  May,  1917,  in  Montegut  v. 
Hickson,  Inc.,  App.  Div.  (N.  Y.),  1st  Dept.,  where  the  copying 
of  a  model  for  a  gown  was  held  to  constitute  unfair  competition, 
when  the  possession  of  the  gown  which  was  copied  was  obtained 
by  fraudulent  means. 

A.  145n;  affirn)ed,  81  Tex.  122-1891;  Concurrence  Deloyale."     Paris,  1912 

16  S.  W.  990.  §  872. 

.*6  Darras,  cited  by  Pouillet  "  Traits  "  Burrow   v.    Marceau,   124   App. 

des  Marques  de  Fabrique  et  de  la  Div.  (N.  Y.)  665. 


CHAPTER    II 

Basis  of  the  Action  for  Unfair  Competition 

Section  5.  Legal  basis  of  the  action  for  unfair  competition. 

6.  Grounds  of  the  action  for  unfair  competition. 

7.  Theory  that  the  court  acts  to  promote  honest  and  fair  dealing. 

8.  Theory  that  the  court  aims  to  protect  the  purchasing  public. 

9.  Theory  that  the  court  aims  to  protect,  not  rights  of  the  public, 

but  rights  and  property  of  individuals. 

10.  Property  rights  in  marks  which  are  not  technical  trade-marks. 

11.  Exclusive  right  to  a  name  or  mark  not  necessary  to  action. 

12.  Geographic  extent  of  trade  rights  based  on  priority. 

The  decisions  are  not  clear  as  to  the  exact  character  of  the 
rights,  which  are  protected  by  the  law  of  unfair  competition  or 
the  exact  basis  on  which  actions  of  this  character  are  founded. 

This  uncertainty  is  due  perhaps  to  the  attempt  which  the  courts 
made  in  the  latter  part  of  the  nineteenth  century  to  decide  unfair 
competition  cases  as  analogous  to  trade-mark  cases.  It  is  now 
seen  that  these  rights,  whether  property  or  not,  are  entitled  to  pro- 
tection and  it  very  well  may  be  that  in  the  future,  acts  of  unfair 
competition  will  be  regarded  neither  as  injuries  to  property  nor  as 
torts,  strictly  speaking,  but  rather  as  acts  unfair  to  both  the  pub- 
lic and  the  plaintiff,  hence  inequitable,  and  therefore  actionable. 

§  6.  Legal  Basis  of  the  Action  for  Unfair  Competition.  —  No 
distinction  can  be  made  between  a  trade-mark  and  a  trade  name 
as  regards  the  rights  acquired  in  either  by  usage.  Both  are  held 
to  be  of  hke  character  and  will  be  protected  if  violated.^ 

^  Hainqtie  v.  Cyclops  Iron  Works,  the  word  'Cyclops'  in  this  particu- 
136  Cal.  351-1902;  68  Pac.  1014.  lar  instance  is  the  trade  name  of 
Plaintiffs,  for  years,  called  them-  plaintiffs  rather  than  their  trade- 
selves  "Cyclops  Machine  Works."  mark,  that  fact  is  not  material.  By 
Defendants  set  up  near  by,  calling  long  continued  exclusive  user,  plain- 
themselves  "Cyclops  Iron  Works."  tiffs  and  their  predecessors  in  in- 
"Upon  general  principles  of  equity,  terest  have  acquired  property  rights 
the  acts  of  the  defendants  here  de-  in  the  use  of  the  word  which  defendant 
tailed  will  not  be  countenanced  by  is  bound  to  respect." 
the  courts.     If  it  be  conceded  that 

17 


18        Basis  of  the  Action  for  Unfair  Competition 

§  6.  Grounds  of  the  Action  for  Unfair  Competition.  —  An 
attempt  to  puss  off  goods  is  discovered  to  the  court:  is  it  set  in 
motion  by  its  abhorrence  of  dishonesty  and  double  deahng  or  does 
it  feel  called  upon  to  protect  the  interests  —  the  property  —  of  the 
complainant  or  does  it  feel  that  it  is  its  duty  to  first  protect  the 
purchasing  public  from  deception,  or  does  it  act  in  such  a  case  be- 
cause of  all  these  reasons?  The  following  are  the  principal  grounds 
usually  given :  First,  That  the  court  acts  to  promote  honest  and  fair 
deaUng;  Second,  That  the  aim  of  the  court  is  to  protect  the  pur- 
chasing pubhc;  Third,  That  the  court  aims  to  protect  not  rights 
of  the  public  but  the  rights  and  property  of  individuals. 

§  7.  Theory  that  the  Court  Acts  to  Promote  Honesty  and 
Fair  Dealing.  —  Unfair  competition  is  often  said  to  rest  on  the 
theory  that  a  court  is  in  duty  bound  to  protect  and  promote 
honesty  and  fair  dealing.  "The  ground  on  which  the  jurisdiction 
of  equity  in  such  cases  is  rested,  is  the  promotion  of  honesty  and 
fair  dealing,  because  no  one  has  a  right  to  sell  his  own  goods  as  the 
goods  of  another.  'It  is  perfectly  manifest,'  said  Lord  Langdale, 
'  that  to  do  this  is  a  fraud  and  a  very  gross  fraud.' "  ^  That  this  is 
one  of  the  objects  of  the  court  is  not  doubted.  Many  judges 
have  considered  that  this  consideration  does  not  furnish  sufficient 
basis  for  the  court's  action.  In  the  attempts  that  have  been  made 
to  supplement  it,  however,  no  theory  has  been  advanced  which  has 
received  anything  like  general  acceptance.  The  reason  for  this 
is  perhaps  the  fact  that  most  if  not  all  such  theories  are  attempts 
to  tie  up  this  form  of  action  to  some  of  the  older  recognized 
forms  of  action,  not  taking  into  consideration  the  fact  that 
this  action  has  grown  out  of  a  demand  for  the  regulation  of  com- 
petition on  grounds  of  fairness,  which  has  not  heretofore  existed, 
and  may  fairly  lay  claim  to  be  based  on  grounds  individual  to 
itself  and  to  the  need  it  has  been  developed  to  meet.  Actions 
for  unfair  competition  are  more  and  more  frequently  used  be- 
cause, as  is  pointed  out  in  Shaver  v.  Heller,^  "There  is  no  prac- 
ticable way  other  than  by  prohibition  of  the  use  of  the  name  by 
which  filching  the  trade  of  an  article,  whose  sale  is  solicited  and 
made  by  its  name  can  be  effectually  prevented." 

§  8.  Theory  that  the  Court  Aims  to  Protect  the  Purchasing 
Public.  —  The  early  English  cases  assigned  fraud  on  the  purchas- 

^- Palmer  v.  Harris,  60  Pa.  St.  156-  =>  108  Fed.   821-27;  C.  C.  A.  8th 

1869,  at  p.  159.  Cir.;  65  L.  R.  A.  878. 


Theory  That  Court  Aims  to  Protect  Public  19 

ing  public  as  the  ground  on  which  equity  would  act.  Fraud  on 
the  public  to  the  detriment  of  the  plaintiff  was  the  foundation  of 
the  right  to  damages  at  common  law,  according  to  Lord  Black- 
burn in  Singer  Manufacturing  Co.  v.  Loog;  ^  and  as  long  ago  as 
1838,  it  was  decided  in  Millington  v.  Fox,^  that  intentional  deceit 
was  not  essential  to  warrant  an  equity  court  in  granting  an  in- 
junction, but  that  the  court  will  interfere  to  protect  a  plaintiff,  if 
ordinary  or  unwary  purchasers  are  likely  to  be  misled  to  mistake 
the  defendant's  goods  for  the  plaintiff's.  Nothing  can  be  more 
emphatic  on  this  point  than  the  judgment  in  Singer  Machine 
Manufacturers  v.  Wilson;  ^  where  it  was  held  that  in  cases  of 
this  description,  the  probability  of  misleading,  not  experts  or 
persons  who  know  the  real  facts,  but  ordinary  or  unwary  cus- 
tomers, is  the  mischief  to  be  guarded  against.  This  point  was 
recognized  in  1824  in  Sykes  v.  Sykes."^  In  the  Singer  Manufactur- 
ing Co.  V.  Loog,^  Lord  Selborne,  commenting  on  the  brass  plate 
at  one  time  used  by  the  defendant  in  that  case,  held  that 
persons  may  be  misled  and  may  mistake  one  class  of  goods  for 
another,  although  they  do  not  know  the  names  of  the  makers  of 
either. 

''To  justify  a  court  of  equity  in  interfering,  there  must  be 
something  more  than  the  mere  duplication  by  the  one  party  of 
the  other's  trade  name.  This  is  found  in  the  deceptive  use  of 
imitative  methods  of  display,  or  other  devices  by  which  the 
public  are  led  into  buying  the  infringer's  goods  when  they  in- 
tended to  buy  those  of  the  original  producer.  The  fraud  which 
is  thus  perpetrated  is  a  legitimate  ground  for  equitable  inter- 
ference, and  is  the  practical  basis  for  it."  ^ 

"The  grounds  on  which  unfair  competition  in  trade  will  be 
enjoined  are  either  that  the  means  used  are  dishonest,  or  that,  by 
false  representation  or  imitation  of  a  name  or  device,  there  is  a 
tendency  to  create  confusion  in  the  trade,  and  work  a  fraud  upon 
the  public,  by  inducing  it  to  accept  a  spurious  article.  Where 
these  grounds  are  absent,  and  no  trade-mark  rights  exist,  injunc- 
tion does  not  lie"  (headnote).^" 

4  L.  R.  8  App.  Cas.  15-1882.  » Draper  v.  Skerrett,  116  Fed.  206- 

5  3  Myl.  &  Cr.  338.  1902  (C.  C.  E.  D.  Pa.)    (id.  p.  209). 

«  3  App.  Cas.  376-391-2-1877.  i«  Vitascojje   Co.   v.    U.   S.    Phono- 

^  3  B.  &  C.  541-1824.  graph  Co.,  83  F.  R.  30-1897  (C.  C. 

8  8  App.  Cas.  18.  N.  J.). 


20        Basis  of  the  Action  for  Unfair  Competition 

The  multitudes  of  ignorant  and  unwary  must  be  regarded  in 
considering  the  interest  of  traders  who  may  be  injured  by  the  mis- 
takes of  purchasers.  The  plaintiflF  has  a  right  whether  founded  on 
property  in  hhnself ,  or  upon  reasons  of  pubhc  pohcy  which  make 
it  incumbent  upon  the  courts  to  protect  the  pubhc  from  deceit,  to 
insist  that  his  rival  sell  his  goods  in  such  a  way  as  to  insure  the 
purchasers  of  them  from  deceit." 

As  between  rival  claimants  to  the  right  to  reproduce  a  drama 
or  play,  while  admitting  that  the  author  and  he  to  whom  it  was 
sold  were  entitled  to  protection,  the  court  held  that  the  pubhc 
were  entitled  to  be  honestly  informed  as  to  who  was  playing  it, 
that  they  might  not  confuse  the  play  in  question  with  a  poor 
imitation.^2 

Honest  competition  relies  on  the  intrinsic  merits  of  the  goods. 
It  does  not  require  a  false  or  fraudulent  mark.  To  give  to  the 
product  of  what  is  claimed  to  be  superior  skill,  the  name,  simihtude 
and  unitation  of  an  article  with  which  it  professes  to  compete  is 
fraud.  The  pubhc  should  not  be  obhged  to  guard  against  such 
methods.  The  law  does  not  place  upon  the  purchaser  the  burden 
of  protecting  himself  against  fraud  of  that  sort.  The  seller  of  the 
goods  is  now  compelled  to  assume  that  burden. 

"A  disguise  is  not  usually  assumed  for  an  honest  object.  It  is  a 
mark  more  characteristic  of  deception  and  fraud.    It  defeats  the 

^^  Singer     Machine     Manufacturers  Appellant  attempted  to  play  a  piece 

V.   Wilson,  L.  R.  3  App.  Cas.  376-  called  "Sherlock  Holmes,  Detective." 

1877;  Powell  v.  Birmingham  Vinegar  Held,  names  of  publications  may  be 

Brewer]!  Co.  (1896).  2  Ch.  54.     Lord  protected  by  trade-mark  (citing  Roh- 

Kay:   "It  was  argued  that  the  de-  ertson  v.   Berry,   50  Md.   591-1878). 

fendant    had    nothing    to    do    with  "Sherlock  Holmes,"  the  drama,  has 

the   deception   of   the    pubhc.      The  not  been  copyrighted.    Its  authors  and 

answer  is  obvious.    Every  person  who,  Frohman  as  their  grantee  have  right 

intending  to  buy  a  bottle  of  the  plain-  to  protection  on  the  ground  of  their 

tiff's  sauce,  gets  instead  a  bottle  of  property    in    it    (citing    McLean    v. 

the  defendants',  is  a  customer  taken  Fleming,  96  U.  S.  245-1877;  24  L.  Ed. 

from  the  plaintiff  by  this  deceit;  and  828).    Frohman  owned  exclusive  right 

if  this  is  extensively  done  the  damages  to  produce  tliis  play  by  contract  with 

to    the    plaintiff's    trade    would    be  the   author.     One   seeing   advertise- 

serious"  (p.  83).  mcnt   of   "Sherlock   Holmes,   Detec- 

^^  Hopkins  Amusement  Co.  v.  Froh-  tive"  would  suppose  it  the  same  as 
man,  103  111.  App.  613-1902.  Froh-  Frohman's  play.  The  pubhc  are  en- 
man  and  Gillette  put  on  the  stage  titled  to  protection  as  well  as  Froh- 
a    play    called    "Sherlock    Holmes."  man. 


Court  Aims  to  Protect  Rights  of  Individuals       21 

very  end  and  object  contemplated  by  legitimate  competition  — ' 
the  choice  to  the  public  to  select  between  the  articles  exposed  to 
sale  —  and  operates  as  a  deception  and  imposition  on  the  dealer. 
It  is  to  prevent  such  a  course  of  transaction  and  dealing  that  the 
interposition  of  the  Court  of  Chancery  is  asked,  and  I  have  no 
doubt  it  is  within  its  proper  jurisdiction  to  restrain  a  proceeding  of 
such  a  character  by  injunction."  ^^ 

''The  doctrine  of  unfair  competition  is  possibly  lodged  upon 
the  theory  of  the  protection  of  the  public  whose  rights  are  in- 
fringed or  jeopardized  by  the  confusion  of  goods  produced  by 
unfair  methods  of  trade  as  well  as  upon  the  right  of  a  complainant 
to  enjoy  the  good-will  of  a  trade  built  up  by  his  efforts,  and  sought 
to  be  taken  from  him  by  unfair  methods."  ^^ 

§  9.  Theory  that  the  Court  aims  to  Protect,  not  Rights 
of  the  Public,  but  Rights  and  Property  of  Individuals.  —  The 
courts  frequently  refuse  to  act  at  the  suit  of  an  individual, 
to  protect  the  pubUc,  on  the  ground  that  such  protection 
may  be  extended  by  the  court  only  at  the  suit  of  the  public 
through  its  own  public  officers  and  not  at  the  suit  of  an 
individual.  It  is  contended  that  the  private  action  is  given,  not 
for  the  benefit  of  the  public,  although  that  may  be  its  incidental 
effect,  but  to  reUeve  against  the  invasion,  by  the  defendant,  of  the 
exclusive  rights  of  complainant.  The  bill  here  ''loses  sight  of  the 
thoroughly  estabUshed  principle  that  the  private  right  of  action 
in  such  cases  is  not  based  upon  fraud  or  imposition  upon  the 
public,  but  is  maintained  solely  for  the  protection  of  the  property 
rights  of  complainant."  ^^ 

Chancellor  Westbury  differentiates,  in  this  connection,  cases 
where  the  defendant  imitates  the  plaintiff's  goods  and  thus  causes 
mistakes  on  the  part  of  buyers,  and  those  cases  where  this  feature 
is  not  present.  He  says:  "It  is,  indeed,  true  that,  unless  the  mark 
used  by  the  defendant  be  applied  by  him  to  the  same  kind  of  goods 
as  the  goods  of  the  plaintiff,  and  be  in  itself  such  that  it  might  be 
and  is  mistaken  in  the  market  for  the  trade-mark  of  the  plaintiff, 
the  Court  will  not  interfere,  because  there  is  no  invasion  of  the 

"  Taylor    v.    Carpenter,    2    Sandf.  Cement  Co.,  130  F.  R.  703-705-1904 

Ch.    676-1845;   Drake   Medicine   Co.  (C.  C.  A.  7th  Cir.). 

V.   Glessner,   68   Ohio   St.   337-1893;  ^^  American  Washboard  Co.  v.  Sag- 

67  N.  E.  722,  62  L.  R.  A.  94  1.  inaw  Mfg.  Co.,  103  F.  R.  281-285- 

"(?.    W.    Cole    Co.    V.    Arnerican  1900;  50  L.  R.  A.  609. 


22         Basis  of  the  Action  for  Unfair  Competition 

lilaiiitiff's  right;  and  tlius  the  mistake  of  buyers  in  the  market, 
under  which  they,  in  fact,  take  defendant's  goods  as  the  goods  of 
the  plaintiff  —  that  is  to  say,  imposition  on  the  pubUc  —  becomes 
the  test  of  the  property  in  the  trade-mark  having  been  invaded 
and  injured.  *  *  *  The  true  principle,  therefore,  would  seem 
to  be  that  the  jurisdiction  of  the  Court  in  the  protection  of  given 
trade-marks  rests  upon  property,  and  that  the  Court  interferes  by 
injunction,  because  that  is  the  only  mode  by  which  property 
of  this  description  can  be  effectually  protected.  The  same  things 
are  necessary  to  constitute  a  title  to  relief  in  equity  in  the  case  of 
the  infringement  of  a  right  to  trade-mark  as  in  the  case  of  the 
violation  of  any  other  right  of  property."  ^^  When  one  has 
estabUshed  a  trade  or  business  in  which  he  has  used  a  particular 
device,  symbol,  or  name  so  that  it  has  become  known  in  trade  as  a 
designation  of  such  person's  goods,  equity  will  protect  him  in  the 
use  thereof.^"  "Such  person  has  a  right  to  complain  when  another 
adopts  this  symbol  or  manner  of  marking  his  goods  so  as  to  mis- 
lead the  public  into  purchasing  the  same  as  and  for  the  goods  of 
the  complainant.  Plaintiff  comes  into  a  court  of  equity  in  such 
case  for  the  protection  of  his  property  rights.  The  private  action 
is  given,  not  for  the  benefit  of  the  public,  although  that  may  be  its 
incidental  effect,  but  because  of  the  invasion  by  defendant  of 
that  which  is  the  exclusive  property  of  complainant.  In  Canal  Co. 
V.  Clark,^^  the  court  said:  'It  is  invariably  held  that  the  essence  of 
the  wrong  consists  in  the  sale  of  the  goods  of  one  manufacturer  or 
vendor  as  those  of  another.'"  ^^ 

"The  right  to  restrain  anybody  from  using  any  name  that  he 
likes  in  the  course  of  any  business  he  chooses  to  carry  on  is  a  right 
in  the  nature  of  a  trade-mark,  that  is  to  say,  a  man  has  a  right  to 
say,  'You  must  not  use  a  name,  whether  fictitious  or  real  —  you 
must  not  use  a  description,  whether  true  or  not,  which  is  intended 
to  represent,  or  calculated  to  represent,  to  the  world  that  your 
business  is  my  business,  and  so,  by  a  fraudulent  misstatement, 
deprive  me  of  the  profits  of  the  business  which  would  otherwise 

''^  Leather    Cloth    Co.    v.    American  'US    Wall.    322-1871;    80    U.    S. 

Leather  Cloth  Co.,  4  De  G.  J.  &  S.  311;  20  L.  ed.  583. 
1.37-41-42-1863;  11  H.  L.  Gas.  523.  ^^  American  Washboard  Co.  v.  Sag- 

"  This  passage  quoted   Bates  Mfg.  inaw  Mfg.  Co.,  103  F.  R.  281-84-1900, 

Co.  V.  Bates  Numbering  Mach.  Co.  in  50  L.  R.  A.  609. 
172  F.  895. 


Rights  in  Marks  not  Technical  Trade-marks        23 

come  to  me.'  That  is  the  principle,  and  the  sole  principle,  on 
which  this  Court  interferes.  The  Court  interferes  solely  for  the 
purpose  of  protecting  the  owner  of  a  trade  or  business  from  a 
fraudulent  invasion  of  that  business  by  somebody  else.  It  does 
not  interfere  to  prevent  the  world  outside  from  being  misled  into 
anything."  ^^ 

The  Supreme  Court  of  the  United  States  considers  that  tlie 
action  of  unfair  competition  is  based  on  the  ground  that  the 
deception  by  one  trader  resulting  in  loss  to  another  of  ' '  advantages 
of  celebrity"  is  against  equity.  "Equity  gives  rehef  in  such  a 
case,  upon  the  ground  that  one  man  is  not  allowed  to  offer  his 
goods  for  sale,  representing  them  to  be  the  manufacture  of  another 
trader  in  the  same  commodity.  Suppose  the  latter  has  obtained 
celebrity  in  his  manufacture,  he  is  entitled  to  all  the  advantages 
of  that  celebrity,  whether  resulting  from  the  greater  demand  for 
his  goods  or  from  the  higher  price  the  public  are  willing  to  give 
for  the  article,  rather  than  for  the  goods  of  the  other  manufac- 
turer, whose  reputation  is  not  so  high  as  a  manufacturer."  ^^ 

§  10.  Property  Rights  in  Marks  which  are  not  Technical  Trade- 
marks. —  The  difference  most  often  noted  between  technical 
trade-mark  cases  and  those  involving  unfair  competition  seems  to 

20  Levy  V.    Walker,   L.    R.    10   Ch.  marks  on  account  of  the  injury  which 

Div.  436-47-48-1879.  is  thus  done  to  him.    The  wrong  done 

"Imposition    on   the   pubHc   occa-  to  him  consists  in  misrepresenting  the 

sioned  by  one  man  selling  his  goods  as  vendible  articles  sold  as  being  those 

the  goods  of  another,  cannot  be  the  of  the  true  owner  of  the  trade-mark, 

ground   of   private   action   or   suit."  and  thus  to  a  greater  or  less  extent 

Chancellor  Westbury  in  Leather  Cloth  depriving  him  of  the  benefit  of  the 

Co.  V.  American  Leather  Cloth  Co.  (4  reputation  he  has  given  to  the  articles 

De  G.  J.  &  S.   137-41-1863,   11  H.  made  or  dealt  in  by  him"  (id.  p.  103). 

L.  Gas.  523);  Weener  v.  Brayton,  152  Gited  in  American  Washboard  Co.  v. 

Mass.  101;  25  N.  E.  46;  8  L.  R.  A.  Saginaw  Mfg.  Co.,  103  F.  R.  281-285- 

640.     "The  jurisdiction  of  a  court  of  1900;  50  L.  R.  A.  609. 
equity  to  restrain  the  wrongful  use  "The  rule  which  protects  against 

of  such  trade-marks  by  persons  not  unfair   competition   is   primarily   for 

entitled  thereto  is  founded,  not  upon  the  protection  of  the  party  against 

the  imposition  upon  the  public  thus  whom  such  competition  is  directed, 

practiced,   but   on   the   wrongful   in-  and    only   incidentally   for   the    pro- 

vasion  of  the  right  of  property  therein  tection    of    the    public."      (Paul    on 

which  has  been  acquired  by  others.  Trade-marks,  p.  388,  §  215.) 
A  remedy  is  offered  only  to  the  owner  -'•  McLean    v.    Fleming,    96    U.    S. 

of  the  right  of  property  in  such  trade-  245-251-1877;  24  L.  ed.  828. 


24        Basis  of  the  Action  for  Unfair  Competition 

rest  on  the  fact  that,  in  technical  trade-mark  cases,  the  com- 
plainant has  a  distinct  property  interest  in  the  technical  mark, 
while  in  cases  of  unfair  competition  he  is  said  to  have  no  property 
interest  in  that  which  the  defendant  has  used  or  imitated  to  his 
injury  or  damage.  Nevertheless,  he  has  defrauded  the  plaintiff  of 
something,  and  that  something  is  valuable.  A  name  may  be 
pubUc  property,  and  yet,  if  someone  acquire  right  to  use  it  exclu- 
sively, in  a  limited  field  even,  that  right  is  valuable.  The  right  of 
the  Saxon  villager  to  use  the  common  as  a  pasture  was  a  limited 
right,  yet  it  was  property. 

Where  the  complainant  is  adjudged  to  have  a  distinct  and  sole 
property  right  to  use  his  mark,  the  court  will  enjoin  injury  to  it 
regardless  of  the  intent  of  the  offender.  But  where  his  mark  is 
something  that  is  free  to  both  parties  to  use,  as,  for  instance,  the 
name  of  the  family  to  which  both  belong,  and  which,  therefore, 
cannot  be  the  complainant's  property  exclusively,  the  court  may 
find  the  complainant  to  possess  something  in  connection  with  that 
name  which  it  must  protect.  Many  judges  have  called  that  some- 
thing property,  while  more  have  denied  it  to  be  property. 

This  intangible  interest  in  a  mark,  used  by  the  maker  or  vendor 
of  the  article  to  which  it  is  attached,  and  which  is  protected  by  the 
application  of  the  rules  of  unfair  competition,  is  a  part  of  the 
good- will  of  the  seller  in  such  a  mark.  The  courts  seem  to 
distinguish  this  right,  whatever  it  be  called,  from  the  property 
of  the  owner  of  a  technical  trade-mark  in  that  mark,  although  the 
good-will  in  a  trade  name  or  mark,  not  a  technical  one,  would 
seem  to  be  an  important  part  of  what  is  usually  termed  the  good- 
will in  a  business  which  is  undoubtedly  property.  For  instance,  in 
the  case  of  American  Washboard  Co.  v.  Saginaw  Mfg.  Co.,^"^  no 
trade-mark  was  in  question,  and  the  ground  of  the  injunction 
issued  was  the  invasion  of  the  plaintiff's  property  rights. ^^ 

"  103  Fed.  291-1900,  C.  C.  A.,  6th  the  pubUc,  although  that  may  be  its 

Cir.,  5  L.  R.  A.  609.  incidental  effect,  but  because  of  the 

"  The  case  opens  with  the  specific  invasion  by  defendant  of  that  which 

statement  that  no  claim  was  made  by  is  the  exclusive  property  of  complain- 

the  plaintiff  that  it  possessed  a  techni-  ants"  (id.  284).    And  again  the  court 

cal  trade-mark.    " Plaintiff  comes  into  said:  "The  jurisdiction  of  a  court  of 

a  court  of  equity  in  such  a  case  (viz :  equity  to  restrain  wrongful  use  of  such 

unfair  competition)  for  the  protection  trade-marks  by  persons  not  entitled 

of  his  property  rights.     The  private  thereto,  is  founded,  not  upon  the  im- 

action  is  given,  not  for  the  benefit  of  position  upon  the  public,  but  on  the 


Rights  in  Marks  not  Technical  Trade-marks        25 

The  property  rights  in  the  good-will  of  a  particular  business 
consist  in  part  in  the  marks  used  on  its  goods,  in  its  stand  or  local- 
ity, in  its  name,  and  all  of  these  things  are  under  the  protection  of 
a  court  of  equity.  ^^  These  features  may  sell  for  many  times  what 
all  its  personal  property  of  other  sorts  will  bring.  Their  value  is 
frequently  the  result  of  the  most  expensive  advertising,  and  a 
court  of  equity  protects  this  property  zealously  from  injury 
through  unfair  methods.  ''Money  invested  in  advertising  is  as 
much  a  part  of  a  business  as  if  invested  in  buildings  or  machinery, 
and  when  the  goods  of  a  manufacturer  have  become  popular, 
not  only  because  of  their  intrinsic  worth,  but  also  by  reason 
of  the  ingenious,  attractive,  and  persistent  manner  in  which  they 
have  been  advertised,  the  good-will  thus  created  is  entitled  to  pro- 
tection against  unfair  competition."  ^^  Referring  to  the  case  of 
Millington  v.  Fox,~^  Lord  Chancellor  Westbury  in  Hall  v.  J5ar- 
rows,^''  says:  "The  case  *  *  *  jg  very  important  as  estab- 
lishing the  principle  that  the  jurisdiction  of  the  court  in  the  pro- 
tection of  trade-marks  rests  upon  property,  and  that  fraud  in  the 
defendant  is  not  necessary  for  the  exercise  of  that  jurisdiction." 
Later  in  this  opinion,  referring  to  plaintiff's  trade  name,  he  said 
(p.  157)  that  ''the  trade-mark  is  a  valuable  property  of  the 
partnership  *  *  *  and  may  be  properly  sold  with  the  works, 
and,  therefore,  properly  included  as  a  distinct  subject  of  value  in 
the  valuation  to  the  surviving  partner."  This  statement  was 
made  in  1863,  when  the  law  now  connected  with  "technical 
marks"  was  hardly  known. 

Blackburn  says  of  this  case:  ^^  "And  I  think  it  settled  by  a 
series  of  cases,  of  which  Hall  v.  Barrows  ^^  is,  I  think,  the  leading 

wrongful    invasion    of    the    right    of  the    court    interferes   by    injunction, 

property  therein  which  has  been  ac-  because  that  is  the  only  mode  by  which 

quired  by  others.    A  remedy  is  offered  property  of  this  description  can  be 

only  to  the  owner  of  the  right  of  prop-  effectually  protected." 

erty  in  such  trade-marks  on  account  of  ^4  i{all  v.  Barrows,  9  Jurist,  N.  S. 

the  injury  which  is  thus  done  to  him"  483-1863;  4  De  G.  J.  &  S.  150. 

(id.  285).  "  mison  Co.  v.  Foster,  80  Fed.  896- 

Leather  Cloth  Co.   v.  Am.  Leather  1897  (C.  C.  S.  D.  N.  Y.). 
Cloth  Co.,  11  H.  L.  Gas.  523-1863.  ^e  3  Myl.  &  Gr.  338-1838. 

"The  true  principle,  therefore,  would  274  De  G.  J.  &  S.  150-56-1863. 

seem  to  be  that  the  jurisdiction  of  the  ^^  Singer  Mfg.  Co.  v.  Loog,  L.  R.  8 

court  in  the  protection  given  trade-  App.  Gas.  15-33-1882. 
marks  rests  upon  property,  and  that  ^^  4  De  G.  J.  &  S.  150-1863. 


26        Basis  of  the  Action  for  Unfair  Competition 

one,  that  both  trade-marks  and  trade  names  are  in  a  certain  sense 
property,  and  that  the  right  to  use  them  passes  with  the  good-will 
of  the  business  to  the  successors  of  the  firm  that  originally  estab- 
lished them,  even  though  the  name  of  that  firm  be  changed  so 
that  they  are  no  longer  strictly  correct.  This  was  evidently  Lord 
Cottenham's  opinion  in  Millington  v.  Fox,"^^  and  I  know  of  no 
authority  against  it."  A  trade  name  may  be  either  the  name  of 
the  manufacturer  of  goods  or  some  name  by  which  the  manufac- 
tured goods  have  become  generally  known.  There  is  a  kind  of 
property  in  such  a  name  and  interference  with  it  will  be  restrained 
by  the  court  if  there  is  a  prospect  of  injury  to  the  owner  of  it.^^ 

§  11.  Exclusive  Right  to  a  Name  or  Mark  not  Necessary  to  Ac- 
tion. —  In  an  action  for  unfair  competition  it  is  not  necessary 
that  the  plaintiff  should  have  an  absolute  and  exclusive  right 
to  the  distinguishing  marks  which  he  alleges  the  defendant  has 
wrongfully  used.  The  defendant  may  be  properly  enjoined  in 
such  an  action,  although  undoubtedly  entitled  to  use  the  name  or 
mark  in  question,  provided  that  he  uses  it  in  such  a  way  as  not  to 
injure  the  complainant.  There  need  be  no  exclusive  right  in  the 
complainant.  A  definite  property  right  may  arise  in  a  name  or 
mark,  although  it  is  not  a  technical  trade-mark.  This  right  is 
qualified  and  not  exclusive,  but,  hke  the  rights  in  a  technical 
mark,  is  valuable  in  a  very  real  sense.  It  is  settled  law  that  the 
right  to  use  a  technical  trade-mark  is  not  a  privilege  attaching 
only  to  the  person  first  using  it,  but  an  actual  property  right, 
capable  of  being  dealt  in  and  of  being  transferred  as  property 
from  person  to  person.  This  is  equally  true  of  names  and  marks 
that  are  not  technical  trade-marks.  A  dealer  has  acquired  val- 
uable interests  in  some  name,  by  long  use  as  a  trade  name.  He 
may  sell  such  right  as  he  has  in  that  name  for  value  and  give 
good  title.  If  another  steals  his  business  by  using  a  similar  and 
confusing  name,  his  damage  is  none  the  less  real  because  his  mark 
is  not  a  technical  trade-mark.  To  protect  his  rights  he  needs  only 
to  prove  his  ownership  of  such  an  interest. 

In  1916,  in  Hanover  Star  Milling  Co.  v.  Metcalf,^^  the  Supreme 
Court  said:  "The  redress  that  is  accorded  in  trade-mark  cases  is 
based  upon  the  parties'  right  to  be  protected  in  the  good-will  of  a 

^«  3  Myl.  &  Cr.  338-1838.  37  Ch.  Div.  449-1SS8;  12  Encyc.  of  the 

"  Citing  Borthmck  v.  Evening  Post,      Laws  of  England,  234-5. 

"  240  U.  S.  403,  412-413  (1916). 


Exclusive  Right  to  a  Name  not  Necessary  to  Action     27 

trade  or  business.  *  *  *  Courts  afford  redress  or  relief  upon 
the  ground  that  a  party  has  a  valuable  interest  in  the  good-will  of 
his  trade  or  business  and  in  the  trade-marks  adopted  to  maintain 
or  extend  it.  The  essence  of  the  wrong  consists  in  the  sale  of  the 
goods  of  one  manufacturer  or  vendor  for  those  of  another"  (citing 
cases),  "This  essential  element  is  the  same  in  trade-mark  cases 
as  in  cases  of  unfair  competition,  unaccompanied  with  trade-mark 
infringement.  In  fact  the  common  law  of  trade-marks  is  but  a 
part  of  the  broader  law  of  unfair  competition"  (citing  cases). 
"Common  law  trade-marks  and  the  rights  to  their  exclusive  use 
are,  of  course,  to  be  classed  among  property  rights,  but  only  in  the 
sense  that  a  man's  right  to  the  continued  enjoyment  of  his  trade 
reputation  and  the  good-will  that  flows  from  it,  free  from  unwar- 
ranted interference  by  others,  is  a  property  right  for  the  protection 
of  which  a  trade-mark  is  an  instrumentality." 

See  also  Shaver  v.  Heller, ^"^  which  holds  that  suits  for  unfair 
competition  in  trade  "are  founded  upon  the  damage  to  the  trade 
of  the  complainants  by  the  fraudulent  passing  of  the  goods  of  one 
manufacturer  for  those  of  another.  *  *  *  Nq  proprietary 
interest  in  the  words,  names,  or  means  by  which  the  fraud  is  per- 
petrated is  requisite  to  maintain  a  suit  to  enjoin  it.  It  is  sufficient 
that  the  complainant  is  entitled  to  the  custom — the  good-will — of  a 
business  and  that  this  good-will  is  injured  or  is  about  to  be  injured, 
by  the  palming  off  of  the  goods  of  another  as  his.  *  *  * 
There  is  no  practicable  way  other  than  by  prohibition  of  the  use 
of  the  name,  by  which  filching  the  trade  of  an  article  whose  sale  is 
soUcited  and  made  by  its  name  can  be  effectually  prevented."  ^^ 

^*  108  F.  R.  821-26-27-1901  (C.  C.  non,  quocunque  modo  rem,'  seems  to 

A.  8th  Cir.) ;  65  L.  R.  A.  878.  apply  in  full  force  to  modern  times,  I 

3*  See  also  Bally  v.  Hill,  1  Hem.  &  can  only  interfere  when  some  private 

M.   264-1863.     A  manufacturer  ob-  right  is  thereby  infringed"  (id.  p.  268). 

tained  a  gold  medal  at  Exhibition  of  As  there  was  no  attempt  to  pass  off 

1862  for  pickles,  etc.,  and  sought  to  defendant's    goods    as    those    of    the 

restrain   a   rival  from   making   false  plaintiff,  injunction  was  refused.    Fol- 

statements  on  his  goods  that  he  too  lowed  by  Stirling,  J.,  in  Tallerman  v. 

had  been  awarded  a  gold  medal  at  Dowsing    Radiant    Heat    Co.    (1900), 

same  exhibition  in  respect  of  same  1  Ch.  1. 

class  of  goods.    Held:  "It  is  no  part         Avery   &   Sons  v.   Meikle  &  Co., 

of  the  duty  of  the  court  to  enforce  81  Ky.    73-84-1883.    *    *    *    "The 

the    observance    of    the    dictates    of  object  of  trade-mark  law  is  to  pre- 

morality;  and  though  the  old  maxim  vent  one  person  from  selling  his  goods 

*rem  facias,  rem,  si  possis,  rede;  si  as  those  of  another,  to  the  injury  of 


28        Basis  of  the  Action  for  Unfair  Competition 

While  the  protection  of  the  general  public  is  not  intrusted  to  any 
individual  and  no  person  may  institute  an  action  of  this  sort  to  pre- 
vent deception  of  people  generally ;  nevertheless  if  the  public  is  being 
deceived  as  to  some  article  of  commerce  as,  for  instance,  identity  of 
a  business  house,  some  one  is  being  wronged,  and  the  righting  of 
that  wrong  will  often  result  in  distinct  benefit  to  the  general  public. 

Courts  will  sometimes  protect  trade  names  or  marks,  although 
not  registered  or  properly  selected  as  trade-marks,  on  the  broad 
ground  of  enforcing  justice  and  protecting  one  in  the  fruits  of  his 
toil.  "This  is  bottomed  on  the  principle  of  common  business 
integrity,  and  proceeds  on  the  theory  that,  while  the  primary  and 
common  use  of  a  word  or  phrase  may  not  be  exclusively  appro- 
priated, there  may  be  a  secondary  meaning  or  construction  which 
will  belong  to  the  person  who  has  developed  it.  In  this  secondary 
meaning  there  may  be  a  property  right."  ^^ 

A  reading  of  the  cases  cited  above  shows  that  three  grounds  at  least 
for  this  action  have  beenrecognized.  (1)  The  promotion  of  honesty 
and  fair  dealing.  (2)  The  protection  of  the  purchasing  public 
against  fraud.    (3)  The  protection  of  the  plaintiff's  property  rights. 

§  12.  Geographic  Extent  of  Trade  Rights  Based  on  Priority. — 
Rights  protected  in  unfair  competition  cases  are  often  said  to  grow 
out  of  priority  of  use  by  plaintiff,  not  by  reason  of  mere  adoption. 
In  Canal  Co.  v.  Clark, ^"^  the  Court  speaks  of  "the  first  appro- 
priator."  Similar  expressions  are  often  found  in  the  cases.  It 
has  long  been  a  question,  however,  as  to  what  is  the  extent  geo- 
graphically of  the  rights  thus  obtained  by  being  the  first  user  of  a 
mark.  It  has  often  been  maintained  that  registration  by  the 
first  user  extends  his  rights  to  the  boundaries  of  the  jurisdiction, 
under  the  laws  of  which  the  registration  is  made.  "In  the  ordi- 
nary case  of  parties  competing  under  the  same  mark  in  the  same 
market,  it  is  correct  to  say  that  prior  appropriation  settles  the 
question."    Hanover  Star  Milling  Co.  v.  Metcalf.^^ 

When,  however,  two  or  more  persons  have  been  using  the  same 
mark  in  widely  separated  markets,  even  in  the  same  jurisdiction, 

the  latter  and  of  the  pubhc.    It  grew  emergency  exists  to  justify  a  neces- 

out  of  the  philosophy  of  the  general  sarily  different  manner  of  use." 
rule  that  every  man  should  so  use  his  ^^  Sartor  v.  Schaden,  125  Iowa,  696- 

own  property  and  rights  as  not  to  at  p.  700,  1904;  101  N.  W.  511. 
injure  the  property  or  rights  of  an-  "  13  Wall.  311-13;  80  U.  S.  311; 

other,  unless  some  priority  of  right  or  20  L.  ed.  581-1871. 

38  240  U.  S.  403-415-1916. 


Geographic  Extent  of  Trade  Rights  Based  on  Priority    29 

and  not  in  competition  with  each  other,  a  complex  question  is 
presented.  On  this  point  the  Supreme  Court  in  Hanover  Star 
Milling  Co.  v.  Metcalf  (supra)  said:  "But  where  two  parties  in- 
dependently are  employing  the  same  mark  upon  goods  of  the  same 
class,  but  in  separate  markets  wholly  remote  from  each  the  one 
from  the  other,  the  question  of  prior  appropriation  is  legally 
insignificant,  unless  at  least  it  appear  that  the  second  adopter 
has  selected  the  mark  with  some  design  inimical  to  the  interests 
of  the  first  user,  such  as  to  take  the  benefit  of  the  reputation  of  his 
goods  to  forestall  the  extension  of  his  trade  or  the  like." 

It  would  seem  that  this  is  almost  equivalent  to  saying  that  where 
the  conditions  stated  by  the  Court  in  this  case  are  present  the  whole 
question  must  be  decided  on  the  peculiar  facts  of  each  case.  Were 
this  rule  to  be  strictly  applied,  it  would  apparently  increase  seriously 
the  difficulties  of  extending  the  market  of  an  article  by  modern  sell- 
ing methods  and  advertising  on  a  national  basis.  It  is  easy  to  recall 
many  articles  now  being  sold  the  country  over  under  brands  which 
are  the  property  of  concerns  that  started  in  a  small  local  way  and 
gradually,  by  good  business  methods,  extended  the  knowledge  of 
and  market  for  their  products  to  the  whole  country.  It  is  not  to  be 
assumed  that  the  Supreme  Court  intended  by  the  rule  in  the  Han- 
over case  to  curtail  opportunities  of  our  business  men  by  compelling 
them  at  once  on  starting  business,  either  to  place  their  goods  on  sale 
in  every  part  of  the  country  or  run  the  risk  of  being  later  barred 
from  some  valuable  market  by  some  unknown  competitor,  who 
chanced  to  adopt  and  use  in  those  markets  at  an  earlier  date  a 
similar  brand  in  a  small  way.  In  reading  the  Hanover  case  it  is 
well  to  consider  carefully  the  statement  of  the  court  that  this  case 
"is  peculiar  in  its  facts,  and  we  have  found  none  precisely  like  it." 

The  extent  of  the  territory  in  which  a  common  law  trade-mark 
exists  and  will  be  protected  has  been  an  unsettled  question  for  a 
long  time.  Into  consideration  of  it  must  enter:  (1)  The  rights  of 
the  first  user  in  territory  he  has  not  occupied ;  (2)  the  rights  of  any 
later  user  who  has  used  the  name  and  invested  money  in  its 
exploitation  in  ignorance  of  the  user  by  anyone  else;  (3)  the  right 
of  the  first  user  to  extend  his  trade  into  new  territory  as  his  busi- 
ness grows  and  the  popularity  of  his  brand  increases.  Popularity 
of  an  article  of  trade,  or  as  the  Supreme  Court  terms  it,  the 
trader's  "celebrity,"  is  often  a  process  of  growth  over  which  the 
manufacturer  has  only  a  partial  control.    A  visitor  to  a  northern 


30         Basis  of  the  Action  for  Unfair  Competition 

city  from  the  south  or  east  or  vice  versa,  becomes  acquainted  with 
such  an  article.  He  returns  home  and  causes  the  local  dealer  to  put 
the  brand  in  stock  and  a  market  is  automatically  created  at  a 
point  far  distant  from  territory  intentionally  occupied  by  the 
manufacturer.  An  article  is  advertised;  a  reader  at  a  point  far 
distant  from  the  place  of  manufacture  or  from  the  territory  in 
which  the  sale  of  the  article  is  actively  pushed,  sees  the  advertising, 
sends  for  the  article,  and  a  new  market  for  the  goods  is  created. 
This  is  a  normal  extension  of  trade.  It  is  a  natural  process.  It  is 
the  most  normal  process  by  which  the  distribution  of  an  article  in- 
creases. There  is  inherent  in  the  good-will  of  every  business  the  ab- 
solute right  to  reap  the  benefits  of  such  growth.  An  owner  of  a 
trade-mark  may,  either  by  direct  efforts  looking  to  the  expansion 
of  his  distribution  or  by  the  natural  growth  in  popularity  that  comes 
from  good  quality  and  honest  dealing  find  the  market  for  it  carried 
to  distant  and  unexpected  points.  The  statement  of  Judge  Baker 
in  Hanover  Star  Milling  Co.  v.  Allen  &  Wheeler  Co.,^^  that  ''Since 
it  is  the  trade  and  not  the  mark  that  is  to  be  protected,  a  trade- 
mark acknowledges  no  territorial  boundaries  of  municipalities  or 
states  or  nations  but  extends  to  every  market  where  the  trader's 
goods  have  become  known  and  identified  by  his  use  of  the  mark," 
deserves  serious  consideration. 

In  the  decision  of  this  same  case  by  the  Supreme  Court  ^°  the 
Court  holds  that  common-law  trade-marks  like  other  rights  rest- 
ing in  user  may  be  lost  by  "abandonment,  non-user,  laches,  or 
acquiescence,"  and  proceeded  to  further  hold  that  because  the 
Allen  &  Wheeler  Co.  had  allowed  forty  years  to  elapse  without 
attempting  to  sell  goods  under  their  brand  in  the  southern  states 
and  no  sales  had  there  occurred  in  that  time  it  was  ''estopped  to 
assert  trade-mark  infringement  in  that  territory."  What  will  be 
construed,  in  the  future,  to  be  such  laches,  acquiescence  or  non- 
user  as  will  warrant  a  court  in  thus  excluding  an  owner  of  a  brand 
from  new  territory,  of  course  we  cannot  foresee.  It  seems  likely 
that  before  a  concern  will  be  thus  penalized  it  must  first  be  shown 
that  it  has  committed  itself  definitely  to  some  course  of  action 
that  will  give  ample  basis  for  a  finding  that  it  has  adopted  a 
settled  policy  of  confining  its  business  to  one  locality  and  of  making 
no  effort  to  extend  its  business  into  new  territory. 

"208  Fed.  513-19-1913.  Star    Milling    Co.,    240    U.    S.    403- 

*°  Allen  &   Wheeler  Co.  v.  Hanover      1916. 


CHAPTER  III 

Good-Will 

Section  13.  Definitions  of  good-will. 

14.  Elements  of  good-will. 

15.  Relation  of  good-will  to  trade-marks  and  trade  insignia. 

16.  Good-will  protected  by  law  of  unfair  competition. 

17.  Good-will  which  is  not  transferable  —  artists,  musicians,  etc. 

18.  Sale  of  good-will  of  entire  proi)erty  —  rights  of  vendor. 

19.  Presumption  that  no  one  intends  to  part  with  right  to  use  his 

own  name. 

20.  Name  may  be  so  sold  as  to  preclude  the  owner  from  again  using  it 

in  the  same  business. 

21.  Sale  of  business  site;  effect  of,  on  names. 

22.  Sale  and  license  of  trade-mark  rights. 

23.  Duty  to  prevent  confusion  resting  on  one  who  sells  his  business. 

24.  Transfer  of  portraits. 

25.  Rights  of  a  manufacturer  as  to  his  good-will  in  a  name  under 

which  his  goods  are  sold,  not  by  him,  but  by  a  customer  of  his. 

26.  Transfers  in  bankruptcy  and  in  assignments  for  creditors. 

27.  Rights  of  retiring  stockholders  and  others  in  corporate  names. 

28.  Soliciting  old  customers. 

29.  Sale  of  name  or  business  by  originator  of  an  article. 

30.  Effect  of  locality  on  transfers  of  a  business. 

31.  Partners'  rights  in  the  partnership  name,  on  dissolution. 

32.  Dissolution  jjy  death  of  a  partner. 

33.  Transfers  by  descent  and  rights  of  descendants. 

34.  Transfer  of  secret  formulas. 

35.  Good-will,  valuation  of. 

There  never  was  a  time,  in  all  likelihood,  when  good-will  (which 
is  only  another  name  for  credit,  honesty,  fair  name,  reliability) 
played  a  more  important  part  in  commercial  life  than  to-day. 
There  never  was  a  time  when  a  good  name  was  more  to  be  desired, 
for  purely  business  reasons,  regardless  of  any  other  considerations, 
than  to-day.  There  never  was  a  time  when  the  means  and  instru- 
ments designed  for  the  creation  of  a  good  name  for  one's  self  were 
so  highly  developed  as  to-day. 

The  law  of  unfair  competition  is  the  body  of  rules  created  by 
the  common  law  of  the  United  States  (not  by  statute)  to  regulate 

31 


32  Good-Will 

the  conduct  of  those  striving  for  good-will  for  themselves  or  for 
ill-will  for  their  competitors. 

Good-will  is  unquestionably  property.  In  England  it  is  so 
treated  with  reference  to  the  stamp  duty  on  instruments  deal- 
ing with  good-will.^    And  American  courts  have  held  the  same.^ 

Probably  Lord  Hardwicke  was  the  first  to  recognize  this  fact 
when  in  1743  he  said:  "Suppose  the  house  were  a  house  of  great 
trade,  he  must  account  for  the  value  of  what  is  called  the  good- 
will of  it."  2^ 

§  13.  Definitions  of  Good- Will.  —  Lord  Eldon  said  good- 
will was  a  "probability."  Vice-Chancellor  Wood  called  it  an 
"advantage."  The  Michigan  court  terms  it  "favor";  Judge 
Story,  an  "advantage  or  benefit."  Good-will  is  identified  in  most 
instances  by  names  and  it  is  difficult  to  conceive  of  good-will  with 
which  no  name  is  associated.  Injure  the  name  of  a  concern  and 
instantly  its  good-will  depreciates  in  value.  Destroy  its  reputa- 
tion —  its  name  for  honor,  for  promptness,  for  always  dealing 
in  high  grade  goods,  and  the  good- will  is  impaired.  Lord  Eldon 
said  good-will  is  "nothing  more  than  the  probability  that  the  old 
customers  will  resort  to  the  old  place."  ^  He  might  with  equal 
fitness  have  added  that  it  is  the  further  probability  that  old 
customers  will  remember  favorably  the  name  of  the  house  with 
which  they  have  dealt  so  long. 

Sir  John  Leach  in  Chissum  v.  Dewes,'^  defines  good- will  to  be 
"the  advantage  attached  to  the  possession  of  the  house." 

"Good-will,"  said  Lord  Langdale,  "is  the  chance  or  prob- 
ability that  custom  will  be  at  a  certain  place  in  consequence  of 
the  way  in  which  that  business  has  been  previously  carried  on."  ^ 

Various  kinds  of  good-will  grow  up  in  connection  with  various 
sorts  of  business:  one  sort  is  that  belonging  to  a  public-house,  a 
theatre,  an  office  building,  an  amusement  park,  a  manufacturing 
works,  as  the  "Crown  Works,"  (see  Rickerby  v.  Reay,  infra)  and 

» See  Commissioners  of  Inland  Rev-  Tomah  v.  Warren,  94  Wis.  151-1896; 

enue  v.  Angus  &  Co.,  23  Q.  B.  Div.  68  N.  W.  549. 

579-1889;  Brooke  &  Co.  v.  Commis-  "^  Gibbktt  v.   Read,  9   Mod.   459- 

sioners  of  Inland  Revenue,  2  Q.  B.  35&-  1743. 

1896.  4'  '  Cruttwell  v.  Lye,  17  Ves.  335-46- 

2  Metropolitan    Nat.    Bank    v.    St.  1810. 

Louis  Dispatch  Co.,  36  Fed.  722-1888  *  5  Russ.  29. 

(C.  C.  Mo.);  Howard  v.   Taylor,  90  ^England  v.  Downs,  6  Beav.  269- 

Ala.    241-1889;   8   So.   36;   Bank   of  1842. 


Definitions  of  Good-Will  33 

is  usually  termed  local  good-will  or  business  good-will.  Con- 
trasted with  this,  is  personal  or,  as  it  is  often  called,  professional 
good-will.  This  attaches  more  directly  to  a  person,  and  is  not 
associated,  in  the  minds  of  the  public  or  business  world,  with 
any  particular  spot.  "It  is  quite  plain  that  the  good- will  of  a 
public-house  passes  with  the  public-house.  In  such  a  case,  the 
good-will  is  the  mere  habit  of  the  customers  resorting  to  the  house. 
It  is  not  what  is  called  personal  good-will."  ^ 

Then,  too,  there  is  a  good-will  which  attaches  solely  to  goods, 
in  distinction  from  that  belonging  to  a  person  or  a  place  or  busi- 
ness house.  For  instance,  few  people  know  the  name  of  the 
makers,  or  the  place  of  manufacture  of  ''Dutch  Cleanser,"  while 
most  persons  have  heard  of  the  article  itself.  The  ''Gold  Dust 
Twins,"  (the  name  of  a  brand  of  cleaning  powder)  is  well-known, 
but  few  could  say  who  made  it.  So  numerous  are  the  assumed 
names  used  in  business,  that  statutes  are  passed  in  various  states 
requiring  their  registration  in  public  offices  that  the  public  may 
be  informed  of  the  identity  of  the  persons  using  the  name. 

Good-will  of  professional  men  and  in  professional  partner- 
ships attaches  to  persons,  not  to  place  usually;  and  this  is  true  of 
partnerships  made  by  brokers  and  builders,  as  well  as  partnerships 
for  buying  and  selling  cattle  and  other  goods,  where  the  partners 
go  about  from  place  to  place.  It  is  "in  part  the  chance  that 
sellers  will  consign  in  a  name  they  know."  ^  As  showing  what 
professional  good-will  is  and  how  it  is  appendant  to  the  person  of  a 
doctor,  the  case  of  May  v.  Thompson,^  which  arose  on  a  breach  of 
contract  to  buy  a  practice,  is  in  point.  Jessel,  M.  R.,  said  in  that 
case  (p.  718)  that  in  a  contract  for  the  sale  of  a  doctor's  practice, 
"there  is  always  a  stipulation  that  the  selling  doctor  shall  retire 
from  practice  either  altogether  or  within  a  given  distance.  It  is  so 
always  and  there  is  also,  sometimes,  a  stipulation  that  he  shall 
not  solicit  the  patients  or  shall  not  solicit  them  for  a  given  time." 

One  of  the  earliest  cases  on  good-will  was  Cruttwell  v.  Lye,^ 
decided  in  1810,  in  which  Lord  Eldon  seemed  to  think  that,  with- 
out actual  fraud,  no  injunction  should  issue  to  protect  the  good- 
will of  a  concern  which  had  been  sold,  from  possible  injury  from 
further  competition  on  the  part  of  the  vendor;  saying  that  "the 

9  Ex  parte  Punnett,  16  Ch.  Div.  226-  ^  Bates  Partnership,  vol.  II,  §  657. 
33-1880.  8  20  Ch.  Div.  718. 

9 17  Ves.  335-46. 


34  Good-Will 

good-will  which  has  been  the  subject  of  sale,  is  nothing  more 
than  the  probability  that  the  old  customers  will  resort  to  the  old 
place."  Jessel,  M.  R.,  in  Ginesi  v.  Cooper  &  Co.,^'^  questions 
this  rule  of  Lord  Eldon  and  states  what  has  since  come  to  be  the 
law  on  this  point,  thus:  "  'Good-will,'  I  apprehend,  must  mean 
every  advantage  —  every  possible  advantage,  if  I  may  so  express 
it,  as  contrasted  with  the  negative  advantage  of  the  late  partner, 
not  carrying  on  the  business  himself  — •  that  has  been  acquired 
by  the  old  firm  in  carrying  on  its  business,  whether  connected 
with  the  premises  in  which  the  business  was  previously  carried 
on,  or  with  the  name  of  the  late  firm,  or  with  any  other  matter 
carrying  with  it  the  benefit  of  the  business."  The  above  definition 
of  Lord  Eldon  was  given  when  he  was  considering  a  case  of  a 
wagoner  who  carried  goods  on  a  route,  and  the  value  of  his  good- 
will was  solely  in  the  fact  that  people  in  the  locality  knew  a 
wagoner  was  accustomed  to  start  at  the  place  where  he  usually 
did  start  and  would  go  there  when  needing  a  wagoner.  Wood,  V. 
C.,  in  Churton  v.  Douglas,^^  defines  good-will  thus:  ''Good-will,  I 
apprehend,  must  mean  every  advantage  that  has  been  acquired 
by  the  old  firm  by  carrying  on  its  business,  everything  connected 
with  the  premises,  and  the  name  of  the  firm,  and  everything  con- 
nected with  or  carrying  with  it  the  benefit  of  the  business."  ^^ 

Judge  Story  defines  good- will  as  "the  advantage  or  benefit, 
which  is  acquired  by  an  establishment,  beyond  the  mere  value 
of  the  capital  stock,  funds,  or  property  employed  therein,  in 
consequence  of  the  general  public  patronage  and  encouragement 
which  it  receives  from  constant  or  habitual  customers,  on  account 
of  its  local  position,  or  common  celebrity,  or  reputation  for  skill  or 
affluence,  or  punctuality,  or  from  other  accidental  circumstances, 
or  necessities,  or  even  from  ancient  partialities,  or  prejudices."  ^^ 

The  Michigan  definition  is  as  follows:  "The  favor  which  the 
management  of  a  business  has  won  from  the  public,  and  the 
probability  that  old  customers  will  continue  to  give  it  their 
patronage."  ^^ 

Included  in  good-will  is  the  right  to  use  lists  of  customers. 

i»  14  Ch.  Div.  596-600-1880.  ''  2  Story  Partnership,  §  99. 

"  28  L.  J.  Ch.  841-45-1859.  '*  Chittenden  v.   Witbeck,  50  Mich. 

12  See  also  Mene7idez  v.  Holt,   128      401-20-1883;  15  N.  W.  526. 
U.   S.   514-22-1888;  32  L.   ed.   526; 
9  Sup.  Ct.  143. 


Elements  of  Good-Will  35 

The  sale  of  good-will  passes  to  the  purchaser  such  a  list  of  cus- 
tomers and  correspondents  of  the  house.  As  mere  possession  of 
this  list,  acquired  legally,  gives  to  the  possessor  the  right  to  solicit 
the  trade  of  such  customers,  actions  regarding  this  sort  of  good- 
will often  take  the  form  of  applications  to  enjoin  one  having  such 
a  list  from  using  it  to  the  damage  of  the  owner  of  the  good-will. 
See  the  discussion  of  this  question  in  the  chapter  on  Trade  Secrets, 
and  later  sections  in  this  chapter. 

§  14.  Elements  of  Good-Will.  —  Good-will,  as  has  been  seen, 
is  ''favor,"  ''celebrity,"  "probability,"  "habit."  It  is  made  up  of 
all  in  the  daily  life  of  the  community  that  creates  this  popularity 
and  celebrity.  Money  invested  in  sales  campaigns  of  a  con- 
structive sort,  in  advertising,  in  clean  attractive  store  fittings 
and  apparatus,  in  the  wages  of  high  class  employees,  in  contribu- 
tions to  public  enterprises  and  charities  that  create  friendliness 
of  the  public,  every  act  that  increases  the  favor  with  which  the 
concern  is  regarded  by  the  public  creates,  in  part,  its  good-will. 
"Money  invested  in  advertising  is  as  much  a  part  of  the  business 
as  if  invested  in  buildings  or  machinery,  and  a  rival  in  business 
has  no  more  right  to  use  the  one  than  the  other."  ^^ 

Per  contra  every  act  on  the  part  of  a  competitor  that  unfairly 
injures  or  lessens  this  friendly  attitude  of  the  community  is  an 
act  of  unfair  competition,  and  may  be  a  basis  of  court  action  look- 
ing to  the  protection  of  the  good-will  thus  attacked. 

§  15.  Relation  of  Good-Will  to  Trade-Marks  and  Trade  In- 
signia. —  A  trade-mark  or  trade  name  is  one  of  the  visible  me- 
diums by  which  this  good-will  is  identified,  bought  and  sold,  and 
known  to  the  public.  It  is  the  good-will,  however,  and  not  trade- 
marks or  names  that  the  court  seeks  to  protect  in  unfair  competi- 
tion cases. 

Good-will  is  represented,  not  only  by  trade-marks,  but  by  all 
kinds  of  commercial  insignia,  by  any  agencies  used  in  commerce 
to  identify  either  merchandise  or  its  manufacturer.^''  In  the  early 
cases  the  courts  aimed  to  protect  the  mark,  assuming  it  to  be  prop- 
erty, in  and  of  itself.  Recently,  however,  it  has  been  seen  that  the 
actual  property  to  be  protected,  is  not  the  mark,  but  the  good- will 
behind  the  mark,  of  which  the  mark  is  but  a  symbol. 

'6  Wilson  Co.  V.  Foster,  80  Fed.  896,  N.  E.  89,  91;  WeiJistock  v.  Marks,  109 
897.  Cal.  529;  42  Pac.  142,  144. 

''  Fox  V.  Glynn,  191  Mass.  344,  78 


36  Good-Will 

§  16.  Good-Will  Protected  by  Law  of  Unfair  Competition. — 

Good-will  is  protected  by  the  law  of  unfair  competition.  One 
can  pass  off  such  good-will  as  he  possesses,  as  the  good-will  of 
another,  just  as  he  can  pass  off  his  goods  as  those  of  another; 
for  when  a  trader,  whose  goods  have  little  reputation,  holds  him- 
self out  to  be  someone  else,  whose  goods  have  a  favorable  reputa- 
tion, he  fraudulently  obtains  the  benefit  of  a  valuable  good-will 
not  his  own.  Hence  he  does  not  pass  off  his  goods  as  another's 
necessarily,  but  he  holds  himself  out  as  possessing  a  reputation 
that  gives  his  house  and  its  goods  particular  standing  in  the 
mind  of  the  trade  and  the  pubhc,  which  standing  belongs  only 
to  another.  It  has  been  rightly  termed  ''stealing "  for  one  thus  to 
take  fraudulent  advantage  of  another's  good-will. 

Colorable  purchases  of  a  business  of  small  value,  to  obtain  its 
good-will  for  the  purpose  of  using  its  name,  it  being  similar 
to  that  of  a  successful  competitor,  have  been  frequently  con- 
demned by  the  courts.  Such  transactions  are  deemed  fraudu- 
lent and  the  use  of  the  name  in  question  will  be  enjoined.  See 
also  as  to  this,  the  section  of  the  chapter  on  "Family  Names"  as 
to  "Surnames  acquired  otherwise  than  by  Descent."  ^^ 

"  Abel  Morrall,  Ltd.,  v.  Hessiii  &  good-will,  use  of  name,  labels,  etc. 
Co.,  20  R.  P.  C.  429-1903  (Ct.  App.).  Held,  these  purchases  were  colorable 
For  one  hundred  years,  a  needle  busi-  and  made  with  intent  to  defraud  plain- 
ness had  existed  under  the  name  of  tiff,  and  that  the  defendant  might 
"Abel  MorraU."  In  1891,  plaintiff  obtain  trade  intended  for  plaintiff, 
purchased  the  good-will  of  the  needle  That  this  was  fraud  enough  to  enable 
business  of  Joseph  Mogg,  and  Joseph  the  court  to  inquire  into  the  transac- 
John  Richard  Mogg  which  dated  from  tion  even  where  a  man's  own  name  had 
1846.  Abel  Morrall's  or  A.  Mor-  been  purchased.  Injunction  granted 
rail's  needles  were  famous  under  these  against  use  of  J.  Y.  Morrall  or  W. 
names  or  simply  as  IMorrall's.    Mogg's  Mogg  &  Co. 

needles  were  well  known  in  certain  Holloway  v.  Clent,  20  R.  P.  C. 
localities.  Defendant  began  needle  525-27-1903.  Application  for  inter- 
business  in  1893  as  "T.  Hassin&  Co.,"  locutory  injunction.  Plaintiff"  had 
and  in  1900  purchased  business  of  been  a  pill  maker  since  1837,  selling 
Jabcz  Yardley  Morrall,  a  former  em-  Holloway's  Pills.  In  1897,  Clent, 
ployee  of  a  company  now  owTied  by  for  £60,  bought  out  Arthur  Hollo- 
plaintiff.  He  was  not  successful,  way,  who  had  an  ink,  gum,  fur- 
Defendant  purchased  his  business  niture  and  paste  business,  with  his 
for  £68.  W.  Mogg  &  Co.  were  provi-  good-will,  trade  name,  etc.  No  men- 
sion  dealers  and  for  £7  sold  to  defend-  tion  is  made  in  the  agreement  as  to 
ant  "the  whole  bag  of  tricks,"  the  the  pill  business  or  trade  possessed 
receipt  given  by  defendant  mentioning  by   Hollowa3\     Defendant   then  be- 


Good-Will  Which  Is  Not  Transferable  37 

Advertisements  stating  or  suggesting  that  the  one  advertis- 
ing possesses  the  good-will  of  one  well  known  in  business,  when 
such  is  not  the  fact,  is  unfair  competition. 

Where  the  principal  value  of  the  property  of  a  racecourse 
company  was  a  privilege  granted  by  a  jockey  club  to  carry  on 
races,  and  it  tried  to  transfer  its  property  to  a  successor  by  a 
deed  merely  of  its  land,  which  deed,  to  escape  stamp  tax,  was 
for  a  consideration  of  £10,000,  the  value  of  the  land  only,  when 
the  actual  consideration  for  the  entire  sale  was  greater  than  that, 
it  was  held  that  the  good-will  merely  enhanced  the  land  value; 
it  was  not  a  separate  property  and  the  business  and  good-will 
were  not  separable.  ^^ 

In  England  and  the  United  States  injury  to  good-will  not 
caused  by  passing  off  has  not  been  considered  as  a  part  of  the  law 
of  unfair  competition,  but  it  has  been  so  classified  in  Germany 
in  sections  6  and  7  of  the  law  Gesetz  Zur  Bekampfung  des  un- 
lauteren  Wettbewerbs,  passed  May  27,  1896.^^  This  statute 
allows  restraint  of  inaccurate  statements  in  selling  goods  and 
allows,  too,  compensation  for  injury  suffered  and  a  fine  for  one 
who  intentionally  makes  misleading  statements  as  to  price,  etc. 

§  17.  Good-Will  Which  is  Not  Transferable  —  Artists,  Musi- 
cians, etc. — The  good-will  attaching  to  certain  classes  of  trade 
and  professional  names  is  not  transferable.  On  grounds  of  public 
policy  the  right  to  use  the  name  of  an  artist  or  musician  is  not 

gan  to  put  up  and  sell  "HoUoway's  Plaintiffs  were  the  successors  in 
Pills."  Plaintiff  had  a  registered  business  of  two  old  firms,  Mappin 
mark.  He  claimed  to  have  been  es-  Brothers  and  Mappin  &  Webb.  De- 
tabhshed  since  1837,  the  date  when  fendant  sold  goods  similar  to  plain- 
phiintiff  began  business.  Defendant  tiffs',  but  made  by  one  Blyde,  who 
also  wrapped  his  boxes  and  pills  in  was  alleged,  without  strict  proof,  to 
leaflets  issued  by  plaintiff  in  which  have  bought  the  business  in  Sheffield 
plaintiff  wrapped  his  boxes.  "It  of  one  Theophilus  Mappin,  trading 
certainly  is  not  open  to  a  person  to  as  Mappin  &  Sons,  and  bore  tickets 
buy  another's  business  and  then  to  with  such  phrases  as  "Mappin's  A  1 
use  the  name  of  the  vendor  of  that  Quality."  Defendant's  salesmen  rep- 
business,  which  happens  to  be  the  resented  these  goods  to  be  the  same 
name  of  a  well-known  manufacturer  as  plaintiffs'.  Held,  that  plaintiffs 
of  a  different  article  to  assist  him  in  were  entitled  to  an  injunction, 
the  sale  and  business  of  that  other  ^^  In  re  The  Rose  Hill  Race  Course 
article."  Co.,  5  State  Reports,  402-1905. 

Mappin  &  Webb,  Ltd.,  v.  Leapman,  "  See    articles    on    same,    13    Law 

22   R.   P.   C.   398-1905   (Ch.    Div.).  Quarterly  Review,  156-1897. 


38  Good-Will 

capable  of  being  assigned  so  as  to  be  used,  for  example,  in  desig- 
nating or  advertising  a  band,  or  a  series  of  concerts,  with  which 
the  musician  in  question  has  no  connection.^"  The  same  is  prob- 
ably true  of  all  professional  names,  whenever  the  repute  of  the 
name  depends  on  the  personality  or  personal  characteristics 
of  the  individual  in  such  a  way  that  if  used,  except  in  connection 
with  that  individual,  the  public  will  not  be  getting  what  it  has  a 
right  to  expect  from  the  use  of  the  name, 

§  18.  Sale  of  Good-Will  of  Entire  Property  —  Rights  of  Ven- 
dor. —  Where  an  entire  business  is  sold,  the  question  often  arises 
as  to  the  rights  of  the  vendor  to  re-enter  the  same  business,  to 
solicit  the  old  customers,  to  set  up  a  stand  near  the  old  one,  to 
use  the  old  name  in  part  or  in  whole,  to  associate  himself  with 
former  partners,  to  use  wrappers,  bottles,  cartons,  labels  and 
trade  names  of  the  old  concern,  to  state  his  former  connection 
with  it  or  to  trade  on  its  credit  in  any  way. 

With  the  simple  sale  of  a  business  and  its  attendant  good-will 
there  goes  no  legal  or  equitable  right,  according  to  certain  au- 
thorities, to  prevent  the  vendor  from  again  entering  the  same 
business.  He  cannot  resume  business  so  as  to  directly  take  away, 
or  put  himself  in  the  way  of  getting,  the  business  he  has  sold. 
Any  of  the  trade  which  would  naturally  go  to  his  former  place  of 
business  or  "stand,"  or  any  that  would  be  naturally  attracted 
there  because  of  the  name  or  reputation  which  that  business 
bears,  and  which  his  vendee  now  uses,  he  may  not  seek  to  retain ; 
but  unless  he  has  specifically  agreed  in  his  contract  of  sale  not  to 
do  so,  he  may,  if  he  chooses,  re-enter  the  same  line  of  business  in 
any  manner  that  does  not  in  any  way  create  the  impression  that 
the  new  business  he  starts  is  the  old  one,  or  connected  with  it; 
or,  in  other  words,  in  any  way  which  does  not  involve  unfair 
conduct  on  his  part.  The  Encyclopedia  of  the  Laws  of  England, 
volume  6,  page  85,  summarizes  this  rule  by  saying  that  the  pur- 
chaser or  acquirer  for  value  of  a  good-will  cannot  insist  upon  the 
retirement  from  the  trade  of  the  late  owner  of  the  business,  but, 
to  protect  himself,  he  must  obtain  an  agreement  restraining  com- 
petitio?)  —  an  agreement  which  must  satisfy  the  tests  laid  down 
in  Nordenfelt  v.  The  Mnxim-Nordenjell  Guns  &  Ammunition  Co.^^ 

*«  Blakebj  v.  Sonsn,  11)7  Pa.  St.  305-  Chaiieij,  143  Mass.  592;  10  N.  E.  713, 
1900;   47   Atl.   286,   citing   Hoxie   v.      and  other  cases. 

»i  (1894)  App.  Cas.  535. 


No  One  Intends  to  Part  with  Right  to  Own  Name    39 

The  value  of  good-will  bought  from  another  depends  in  part 
upon  whether  it  be  sold  voluntarily  by  the  former  owner  or 
whether  he  parts  with  it  involuntarily  as  in  bankruptcy.  Where 
the  sale  is  voluntary,  a  specific  duty  rests  upon  the  vendor  not 
to  do  anything  in  competition  with  his  vendee,  such  as  the  solicit- 
ing of  old  customers,  which  will  decrease  the  value  of  the  good-will 
sold.  Where  the  sale  is  a  result  of  the  intervention  of  the  law  as 
in  bankruptcy,  this  duty  is  perhaps  less  definite. 

It  is  not  necessary  here  to  discuss  the  principles  of  restraint 
of  trade.  This  work  has  to  do  with  these  contracts,  not  in  the 
making,  but  in  the  enforcement  of  them.  It  assumes  that  the 
contracts  referred  to  are  valid. 

Under  ordinary  circumstances  a  court  of  equity  will  protect  a 
person  using  a  label  which  states  the  true  source  of  the  goods  upon 
which  the  label  appears.  For  instance,  a  person  may  sell  to  an- 
other the  right  to  use  his  name,  but  this  person  may  not  enjoin  a 
third  who  sells  goods  actually  made  by  original  maker,  under  that 
maker's  name.  To  enjoin,  in  such  a  case,  would  be  to  enjoin  the 
sale  of  a  genuine  article." 

§  19.  Presumption  that  no  One  Intends  to  Part  with  Right 
to  Use  His  Own  Name.  —  In  Hazelton  Boiler  Co.  v.  Hazleton 
Tripod  Boiler  Co.,  the  court  said:  "The  right  of  a  man  to  use 
his  own  name  in  connection  with  his  own  business  is  so  funda- 
mental that  an  intention  to  entirely  divest  himself  of  such  a  right 
and  transfer  it  to  another  will  not  be  readily  presumed,  but  must 
be  clearly  shown"  (p.  508).  This  statement  was  made  regarding 
a  transfer  of  all  one's  "right,  title  and  interest  in  a  business"  and 
it  was  held  this  did  not  pass  the  right  to  use  the  name  of  the 
vendor. 2^  See  further  on  this  question  the  chapter  on  "Family 
Names." 

§  20.  Name  May  be  so  Sold  as  to  Preclude  the  Owner  from 
Again  Using  It  in  the  Same  Business.  —  A  person  may,  if  he 

2-  Samuel  v.  Berger,  24  Barb.  163-  that  plaintiffs  were  not  entitled  to 
1856  (N.  Y.  Sup.  Ct.).  Plaintiffs  an  injunction  restraining  defendants 
were  the  assignees  of  Samuel  who,  from  so  doing,  the  court  considering 
by  agreement  with  one  Brindle,  had  that  to  grant  such  an  injunction 
acquired  the  right  to  use  Brindle's  would  be  to  prevent  the  sale  of  the 
name  on  watches  made  by  Samuel,  genuine  article,  and  thus  protect  plain- 
Defendants  sold  watches  which  were,  tiff  in  the  sale  of  a  simulated  one. 
in  fact,  manufactured  by  Brindle  and  "  142  ni.  494-1892;  30  N.  E. 
were  stamped  with  his  name.     Held,  339. 


40 


Good-Will 


wishes,  sell  his  name  once  for  all  and  exclude  himself  entirely 
from  the  use  of  it  in  such  a  way  as  to  injure  his  vendee  in  any 
unfair  way  in  the  enjoyment  of  his  purchase.  This  is  now  decided 
not  to  be  any  unjust  hmitation  of  a  person's  right  to  the  use  of 
his  own  name. 2^  This  question  is  discussed  in  chapter  on  "Family 
Names." 

Having  excluded  himself  by  agreement  from  the  use  of  his  name, 
if  one  uses  his  name  in  re-entering  the  same  line  of  business,  or 
makes  any  attempt  to  reclaim  any  of  the  business  of  the  concern 
he  has  sold  out,  he  will  be  competing  unfairly.  Merely  to  make 
his  own  name  unduly  prominent  may  be  unfair.  ^^  If  in  the  new 
business  the  vendor  makes  use  of  the  identical  name  he  used  be- 
fore or  a  very  similar  one  he  commits  an  inequitable  act.^^     This 


"^  Russia  Cement  Co.  v.  LePage,  147 
Mass.  206-1888;  17  N.  E.  304.  In 
1880,  LePage  and  Brooks  began  to 
make  LePage  glue,  agreeing  to  use 
LePage's  name.  In  1882,  they  sold 
their  business  to  plaintiff,  including 
the  trade-mark  which  was  not  regis- 
tered. In  1886,  LePage  drew  out  and 
began  business  for  himself  in  same 
town  with  plaintiff.  Held,  a  person 
may  sell  his  own  name  as  a  trade  name 
and  preclude  himself  from  further  use 
of  it.  Defendant  enjoined  from  using 
"LePage's  Improved  Liquid"  or  Le- 
Page's "Liquid  Glue,"  and  from  using 
"  LePage's  Liquid  Glue  Co."  as  name 
of  his  company.  Citing  Horton  Mfg. 
Co.  {N.  Y.)  V.  Horton  Mfg.  Co.  (Ind.), 
18  Fed.  816-1883;  McLean  v.  Fleming, 
96  U.  S.  245-1877;  24  L.  ed.  828; 
Dixon  Crucible  Co.  v.  Guggenheim,  2 
Brewst.  (Pa.)  321-1869;  Probasco  v. 
Bomjon,  1  Mo.  App.  241-1876;  Oakes 
V.  Tonsmierre,  4  Woods,  547-1883 
(C.  C.  Ala.);  Celluloid  Mfg.  Co.  v. 
Cellonite  Mfg.  Co.,  32  Fed.  94-1887; 
Ainsworth  v.  Walmsley,  L.  R.  1  Eq. 
518-1866;  Shaver  v.  Shaver,  54  Iowa, 
208-1880;  6  N.  W.  188;  S.  Frazer  v. 
Frazer  Lubricator  Co.,  121  111.  147- 
1886;  13  N.  E.  639;  Gillis  v.  Hall, 


2  Brewst.  (Pa.)  342-1869;  Kidd  v. 
Johnson,  100  U.  S.  617-1879;  25  L.  ed. 
769;  Hoxie  v.  Chaney,  143  Mass.  592- 
1887;  10  N.  E.  713. 

2^  Andrew  Jurgens  Co.  v.  Woodbury, 
56  Misc.  (N.  Y.)  404;  106  N.  Y.  Supp. 
571-1907  (Sup.  Ct.  N.  Y.  Sp.  T.). 
Defendant,  John  H.  Woodbury,  with 
others,  in  1901  transferred  to  the 
predecessors  of  the  plaintiff  all  trade- 
marks and  other  rights  in  connection 
with  various  preparations,  including 
Woodbury's  Facial  Soap,  which  was 
widely  known.  He  engaged  in  no 
competing  business  until  1906,  when 
he  began  to  sell  a  soap  called  "Wood- 
bury's New  Skin  Soap."  There  was 
no  simulation  of  wrapper  or  package, 
except  that  the  name  "Woodbury" 
appeared  conspicuously  on  each  box 
and  cake.    Held  unfair  competition. 

^^  Probasco  v.  Bouyon,  1  Mo.  App. 
241-1876.  Oakes,  one  of  the  defend- 
ants, was  a  former  partner  of  plain- 
tiff. The  firm  made  candies  known 
as  "Oakes'  Candies."  Oakes  sold  to 
plaintiff  his  interest  in  the  firm,  the  bill 
of  sale  including  the  exclusive  right 
to  make  and  sell  "Oakes'  Candy." 
Afterward  he  began  making  candies 
for   defendant,    who   advertised   and 


No  One  Intends  to  Part  with  Right  to  Own  Name    41 


is  true  of  a  name  of  a  brand  of  goods  or  of  a  business  name  as 
much  as  of  a  personal  name.^^     One  member  of  a  family  may 


sold  them  as  "Oakes'  Candies."  Held, 
that  defendants  would  be  restrained 
from  seUing  candy  under  that  name. 
"  Myers  v.  Kalamazoo  Buggy  Co., 
54  Mich.  215.  Myers  bought  of 
owners  of  Kalamazoo  Wagon  Com- 
pany all  their  interest  "in  the  prop- 
erty, assets,  money  and  good-will,  and 
all  the  other  property  of  every  man- 
ner and  nature  in  and  to  the  firm  of 
the  Kalamazoo  Wagon  Co."  His  ven- 
dors then  organized  the  defendant 
company.  Cooley,  J.,  said:  " Plaintiff 
was  entitled  to  be  put  in  possession 
of  what  he  had  bought.  The  good- 
will was  a  substantial  part  of  the 
purchase,  and  purposely  to  take  any 
steps  to  prevent  his  receiving  the 
benefit  of  it  was  a  wrong  of  the  same 
nature  as  would  have  been  the  reten- 
tion of  some  portion  of  tangible  prop- 
erty belonging  to  the  stock  of  the 
company.  This  good-will  is  to  be 
found  in  the  probabihty  that  the  old 
customers  of  the  establishment  whose 
dealings  with  it  have  been  satisfactory 
to  them  will  continue  their  custom 
and  commend  it  to  others." 

Listman  Mill  Co.  v.  Listman  Mill- 
ing Co.,  88  Wis.  334-1894;  60  N.  W. 
261.  William  Listman  originated 
the  trade-mark  or  trade  name  "Mar- 
vel" as  appUed  to  flour,  and  the 
name  was  used  for  some  years  by 
a  firm  of  millers  of  which  he  was  a 
member.  During  this  period,  he 
registered,  in  his  individual  name,  a 
trade-mark  of  which  "Marvel"  was 
the  distinguishing  feature.  The  busi- 
ness and  the  use  of  this  mark  or  name 
were  continued  by  a  corporation 
formed  by  Listman,  and  then  by  the 
plaintiff  corporation,  in  which  he  was 
largely  interested  and  of  which  he  was 


general  manager.    There  was  no  for- 
mal assignment  of  the  trade-mark  or 
express  agreement  regarding  it.    List- 
man  then  severed  his  connection  with 
plaintiff,  organized  the  defendant  com- 
pany in  another    city,   and    defend- 
ant then  began  to  apply  the  name 
"Marvel"   to  its  flour.     Held,   that 
plaintiff  had  acquired   the  exclusive 
right  to  the  use  of  this  mark  or  name. 
Giacojno  Allegretti  v.  Allegrelti  Choc- 
olate Cream  Co.,   177   111.    129-1898. 
"Transfer  of  the  property  and  effects 
of  a  business  carries  with  it  the  exclu- 
sive right  to  use  such  trade-marks  or 
trade  names  that  have  been  used  in 
such  business"  (id.  p.  132).     Citing 
Snyder  Mfg.  Co.  v.  Snyder,  54  Ohio 
St.  86-1896;  43  N.  E.  325;  31  L.  R. 
A.  657;  Williams  v.  Farrand,  88  Mich. 
473-1891;  50  N.  W.  446;  14  L.  R.  A. 
161;  Fish  Bros.  Wagon  Co.  v.  La  Belle 
Wagon  Works,  82  Wis.  546-1892;  52 
N.  W.  595;  16  L.  R.  A.  453;  Merry  v. 
Hooves,  111  N.  Y.  415-1888;  18  N.  E. 
714;  Feder  v.  Benkert,   18  C.  C.  A. 
549;  70  Fed.  613-1895;   C.  S.  Hig- 
gins   Co.   v.   Higgins   Soap   Co.,    144 
N.  Y.  462-1895;  39  N.  E.  490;  27 
L.  R.  A.  42;  Peck  Bros.  &  Co.  v.  Peck 
Bros.    Co.,    113    Fed.    291-1902;    62 
L.  R.  A.  81;  51  C.  C.  A.  251;  Ayer  v. 
Hall,  3  Brewst.  (Pa.)  509-1871;  De- 
fendant, R.  P.  Hall,  had  sold  to  plain- 
tiff the  right  in  a  preparation  called 
"Hall's  Vegetable  Sicilian  Hair  Re- 
newer,"  including  the  right  to  use  the 
defendant's  name,  and  had  been  en- 
joined from  using  the  name  Hall  in 
connection  with  any  similar  prepara- 
tion sold  by  him.    Held,  that  it  was  a 
breach  of  the  injunction  for  him  to 
sell  "R.  P.  Hall's  Improved  Prepa- 
ration  for   the   Hair,"    even   though 


42 


Good-Will 


sell  out  his  rights  in  a  business  to  another  and  in  a  similar  way 
lose  the  right  to  use  his  own  name  to  the  injury  of  the  vendee. ^^ 

§21.  Sale  of  Business  Site;  Effect  of,  on  Names.  —  This 
question  is  complicated  often,  because  the  name  which  is  trans- 
ferred is  attached  more  or  less  definitely  to  some  locality,  build- 
ing, or  address,  which  has  become  really  a  part  of  the  name  and 
reputation  of  the  business.  This  is  true  frequently  of  hotels, 
breweries,  natural  springs,  newspapers,  and  the  like.  In  such 
cases  he  who  buys  the  buildings,  or  acquires  the  right  to  occupy 
them,  will  have  the  right  to  use  the  name  attaching  thereto,  in 
the  absence  of  very  explicit  contractual  arrangement.-^ 


accompanied  by  the  words  "This 
preparation  is  entirely  different  from 
Hall's  Vegetable  Sicihan  Hair  Re- 
newer,  but  is  compounded  by  the 
same  inventor,  R.  P.  Hall." 

28  "Twin  Brothers"  Yeast.  Where 
one  brother  sold  out  to  the  plaintiff, 
the  purchaser  can  enjoin  the  other 
from  using  the  name.  Burton  v. 
Stratton,  12  Fed.  696-1882.  Where 
a  merchant  using  name  "Little  Jake" 
sold  out,  agreeing  not  to  use  the  name, 
he  can  be  enjoined  from  using  the 
name.  Grow  v.  Scligman,  47  Mich. 
607-1882;  11  N.  W.  404. 

29  The  above  statement  is  approved 
in  Wright  Restaurant  Co.  v.  Seattle  Co., 
67  Wash.  690;  122  Pac.  Rep.  348; 
Vonderbank  v.  Schmitt,  44  La.  Ann. 
264-1892;  15  L.  R.  A.  462;  10  So.  616. 
Plaintiff  owned  and  ran  "Hotel  Von- 
derbank" or  "Vonderbank  Hotel." 
Plaintiff  later  opened  "Cafe  Restau- 
rant Vonderbank"  which  was  a  saloon 
with  a  few  rooms.  In  1889,  he  sold 
the  hotel  to  one  Dormitzer,  who  as- 
signed to  creditors,  who  then  conveyed 
to  defendant.  Held,  that  the  right  to 
use  the  name  of  plaintiff  must  be  ex- 
pressly understood  to  have  passed  at 
the  sale  or  the  purchaser  may  be  en- 
joined from  using  it.  Defendant  on- 
joined.      See    Browne    Trade-Marks 


(2d  ed.),  §§  528-29  on  Hotel  Names. 
See  also  index  title  "  Hotel  Names." 

Huwer  v.  Dannenhoffer,  82  N.  Y. 
499-1880.  Defendants  sold  real  estate 
where  their  business  was  conducted 
and  certain  personal  property  of  the 
business.  Defendant  later  set  up  in 
another  place  and  used  same  trade 
name.  Held,  their  trade-mark  "  Silex  " 
did  not  pass  with  place  and  personal 
property  or  must  be  specifically 
nominated  in  sale  in  order  to  pass. 

Rickerhij  v.  Reay,  20  R.  P.  C.  380- 
1903  (Ch.  Div.).  "Reay  &  Carrick" 
began  to  make  farm  machines  at  A.  in 
1875.  Carrick  died  in  1879.  The  firm 
then  became  "  Jno.  Reay."  In  18S0, 
Rickerby,  who  was  in  business  at  Car- 
lisle, sold  the  machines  as  agent.  Reay 
died  in  1885.  In  March,  1886,  Rick- 
erby bought  the  works.  In  1898,  Isaac 
Reay,  the  son  of  John  Reay,  began 
to  make  farm  machinery  in  the  old 
Reay  &  Carrick  works  at  A.,  which 
Rickerby  had  just  vacated.  From 
the  beginning  of  R.  &  C.'s  business 
until  1898,  a  certain  machine  had 
been  sold  by  this  concern  with  a  de- 
vice of  a  crown  upon  the  footplate. 
The  machine  was  advertised  as  "The 
Crown"  and  this  device  was  con- 
tinuously used  by  plaintiff  and  pred- 
ecessors up  to  the  date  of  this  action. 


Sale  of  Business  Site;  Effect  of,  on  Names         43 

The  Missouri  Appeal  Court  has  held,  in  Skinner  v.  Oakes,^^ 
that  courts  do  not  go  to  the  length  of  holding  that  the  name  of 
a  man  may  be  segregated  from  the  man  himself  and  from  his 
business  in  connection  with  which  he  has  used  it,  and  erected 
into  an  ideal  and  abstract  species  of  property,  and  be  made  a 
subject  of  traffic  and  sale  in  the  open  market.  There  is  an  ex- 
ception to  this  in  the  case  of  names  which  are  attached  to  a  place 
of  manufacture.  Judge  Field  says,  in  this  connection,  that: 
"It  is  true,  the  primary  object  of  a  trade-mark  is  to  indicate  by 
its  meaning  or  association,  the  origin  of  the  article  to  which  it 
is  affixed.  As  distinct  property,  separate  from  the  article  created 
by  the  original  producer,  or  manufacturer,  it  may  not  be  the 
subject  of  sale.  But  when  the  trade-mark  is  affixed  to  articles 
manufactured  at  a  particular  establishment  and  acquires  a  special 
reputation  in  connection  with  the  place  of  manufacture,  and  that 
establishment  is  transferred  either  by  contract  or  operation  of 
law  to  others,  the  right  to  use  the  trade-mark  may  be  lawfully 
transferred  with  it.  Its  subsequent  use  by  the  person  to  whom 
the  establishment  is  transferred  is  considered  as  only  indicating 
that  the  goods  to  which  it  is  affixed  are  manufactured  at  the  same 
place  and  are  of  the  same  character  as  those  to  which  the  mark 
was  attached  by  its  original  designer."  ^^  An  assignment  of 
trade-marks  without  any  accompanying  transfer  of  the  business 
with  which  they  are  connected  may  be  valid,  if  they  are  to  be 
used  on  goods  which  are  made  at  the  same  place  as  before,  ^^ 

In  1900,  defendant  issued  circular  right  to  represent  himself  as  carry- 
headed  "  Crown  Combined  Mowing  &  ing  on  the  old  business,  to  use  the 
Reaping  Machine,  manufactured  by  crown  device,  and  even  if  this  were 
Isaac  Ray,  Aspatria,  late  Reay  &  Car-  not  so,  plaintiff's  goods  had  come  to 
rick."  Others  were  headed  "Crown  be  known  as  "Crown"  goods.  Plain- 
Implement  Works,  A  —  "  then  words  tiff's  right  did  not  end  with  the  lease 
"Established  1875"  and  device  of  a  of  the  old  shops,  but  plaintiff  could 
crown.  A  writ  was  issued  in  the  action  not  prevent  the  works  being  called 
for  injunction  restraining  use  of  the  "Crown  Works." 
crown.  August  16,  1902,  defendant  ™  10  Mo.  App.  45-61-1881. 
issued  a  very  similar  advertisement.  ^^  Kidd  v.  Johnson,  100  U.  S.  617- 
This  the  court  terms  "perfectly  un-  1879,  at  p.  620;  25  L.  ed.  769. 
justifiable  from  any  point  of  view"  ^^  Witthaus  v.  Braun,  44  Md.  303- 
(id.  p.  387).  Held,  citing  Lord  Lind-  1875.  One  Falk,  a  dealer  in  tobacco, 
ley  in  Inland  Rev.  Commissioners  v.  assigned  to  complainant,  a  member 
Midler  &  Co.,  App.  Cas.  217-1901,  of  a  firm  of  manufacturers  who  had 
that    plaintiff    had    in    1886    bought  been    manufacturing    for    Falk,    ae- 


44 


Good-Will 


especially   if   the  marks   indicate   some   connection   with  that 
place. 

Such  a  trade  name  attaches  generally  to  the  place  of  manu- 
facture rather  than  to  the  person  of  the  manufacturer.  It  is 
transferred,  not  with  the  person,  but  with  the  business  itself.^^ 
It  cannot  usually  be  assigned  in  gross,  apart  from  the  business 
to  which  it  relates.^''  Wliere  a  watchmaker  of  repute  died  leaving 
no  business  which  was  making  use  of  his  name  and  the  defend- 
ant subsequently  did  use  it,  the  court  refused  to  restrain  him, 
holding  that  the  right  to  the  name  was  not  assignable  in  gross.  ^'^ 
Where  a  name  attaches  to  a  place,  it  may  be  fraud  for  a  person 
who  buys  it  to  use  the  name  in  carrying  on  there  the  same  business 
as  that  of  the  former  owner.  But  he  may  use  the  name  in  a 
different  business  although  the  difference  be  slight,  as  for  instance 
between  gin  and  Scotch  whiskey. ^^ 


cording  to  indications,  all  his  "Smok- 
ing Tobacco  Brands."  Held,  that 
while  in  general,  trade-mark  rights 
can  be  assigned  only  in  connection 
with  the  business,  this  assignment 
was  valid,  since  the  goods  to  which 
the  brands  belonged  continued  to  be 
manufactured  at  the  same  place  and 
by  the  same  concern. 

"  Bury  V.  Bedford,  4  De  G.  J.  &  S. 
352-1864.  A  trade-mark  or  trade 
name  is  generally  associated  with 
the  place  of  manufacture  rather 
than  with  the  person  of  the  manu- 
facturer, and  may  be  transferred 
with  the  business  to  another,  unless  pe- 
culiarly personal  in  its  application.  A 
partnership  trade-mark  or  trade  name 
may  be  sold  with  the  other  partner- 
ship assets  by  the  trustees  under  an 
assignment  for  the  benefit  of  creditors. 

"  Crossman  v.  Griggs,  186  Mass. 
27.5-1904;  71  N.  E.  560. 

»  Thorneloe  v.  Ilill,  11  R.  P.  C.  61- 
1894  (Ch.  Div.).  Defendant  was, 
without  any  right  to  do  so,  selling 
watches  marked  "John  Forrest." 
Held,  however,  that  plaintiff  was  not 
entitled  to  restrain  him  from  doing 


so,  for  the  reason  that  his  right  to 
use  the  name  was  not  established; 
it  was  traced  by  various  steps  to  the 
actual  John  Forrest,  who  died  many 
years  before,  and  the  particular  de- 
fect pointed  out  in  plaintiff's  title 
was  that  the  right  to  use  the  name 
was  not  assignable  in  gross,  without 
some  business  or  good-will  to  which 
it  was  appurtenant.  Fish  Bros. 
Wagon  Co.  v.  Fish  Bros.  Mfg.  Co., 
95  Fed.  457-1899  (C.  C.  A.  8th  Cir.) 
(headnote):  "Aright  of  individuals  to 
use  certain  trade  names  and  devices 
in  connection  with  the  manufacture 
and  sale  of  an  article,  estabhshed  by 
a  judicial  decree,  is  not  personal,  in 
such  sense  that  it  cannot  be  sold  and 
assigned  to  another,  in  a  different 
locality,  in  connection  with  a  transfer 
of  the  good-will  of  their  business." 

'"J.  &  W.  Nicholson  &  Co.  v. 
Buchanan,  19  R.  P.  C.  321-1900. 
About  1847,  A.  &  Co.  began  to  carry 
on  the  "Black  Swan  Distillery."  In 
1897,  successors  of  A.  &  Co.  assigned 
to  the  plaintiffs  the  good-will  and 
trafle-mark,  and  later  all  the  distillery 
plant  was  taken  from  the  premises.    In 


Sale  and  License  of  Trade-Mark  Rights 


45 


A  lessee  of  a  theatre  will  be  allowed  to  use  the  name  as  against 
the  lessor  even  if  the  theatre  is  named  with  the  lessor's  personal 
name.^^  This  rule  goes  upon  the  theory  that  names  of  this  sort 
come  to  identify  not  a  particular  person  but  a  "stand"  or  business 
site  which  he  has  used.  The  good-will  involved  is  the  reputation 
not  of  the  individual  so  much  as  that  of  the  place.  The  individual 
may  have  created  the  favorable  reputation  which  the  place 
enjoys  but  he  cannot  carry  this  name  with  him  when  he  leaves 
the  place.  If  the  name  be  used  to  identify  something  unconnected 
with  this  stand  or  business  site,  confusion  must  result. 

Cases  involving  rights  to  names  of  hotels  after  a  change  of 
ownership  or  of  lease  occurs,  will  be  found  in  chapter  on  "The 
Law  of  Trade  Names." 

§  22.  Sale  and  License  of  Trade-Mark  Rights.  —  The  Mas- 
sachusetts Court  has  held  that  the  right  to  use  a  trade-mark  not 


April,  1897,  defendant,  a  spirit  mer- 
chant, bought  the  property,  put  up  the 
figure  of  a  black  swan,  and  advertised 
that  the  "Black  Swan  Distillery"  had 
been  rebuilt.  His  wagons  were  marked 
"Black  Swan  Distillery."  Defend- 
ant claimed  he  purchased  premises 
without  restriction;  that  "Black 
Swan"  was  nothing  more  than  the 
name  of  the  premises.  The  name 
"Black  Swan"  came  from  the  fact 
that  a  pubhc  house  of  that  name  once 
existed  on  the  spot  where  the  distil- 
lery stood.  It  was  more  often  known 
as  "Anderson's  Distillery"  than  as 
"Black  Swan  Distillery."  Held:  "As 
a  general  rule  the  owner  of  land  or 
buildings  of  any  kind  may  affix  to 
it  any  name  he  pleases.  Day  v. 
Brownrigg,  L.  R.  10  Ch.  Div.  294- 
1878.  But  I  apprehend  the  court 
would  interfere  if  a  particular  name 
were  affixed  with  the  view  of  mak- 
ing a  dishonest  reputation  which 
would  cause  damage  to  another,  as, 
for  example,  if  it  were  used  for  the 
purpose  of  representing  that  a  busi- 
ness carried  on  there  was  the  busi- 
ness of  another,  or  even  if,  without 


any  dishonest  intention,  the  user  were 
such  as  actually,  or  probably,  to  mis- 
lead" (id.  p.  325).  Defendant  had  a 
reputation  as  a  dealer  in  Scotch 
whiskey.  The  Black  Swan  gained  a 
name  as  a  distillery  of  gin  —  not 
whiskey.  Defendant  does  not  deal 
in  gin.  No  evidence  was  shown  of 
anyone  being  misled.  Action  dis- 
missed. 

^^  Booth  V.  Jarrett,  52  How.  169- 
1876  (N.  Y.  C.  P.  Sp.  T.).  Plain- 
tiff had  built  and  for  about  four 
years  managed  a  theatre  which  be- 
came well  known  as  "Booth's  The- 
atre." Defendants  afterward  came 
into  control  of  the  theatre  under 
lease  in  which  it  was  described  as 
"Booth's  Theatre,"  and  designated  it 
in  the  advertisement  of  their  per- 
formances by  the  same  name,  repre- 
senting themselves  as  lessees  and 
managers.  Plaintiff  sought  to  re- 
strain them  from  the  use  of  this  name, 
claiming  that  the  public  would  be 
misled  into  believing  that  he  still 
acted  in  and  managed  the  theatre. 
Held,  that  defendants  were  entitled 
to  continue  the  use  of  the  name. 


46  Good-Will 

strictly  personal  may  be  transferred  with  the  business  for  a  limited 
time,  by  hcense,  subject  to  payment  of  Hccnsc  fees,  or  while  the 
owner  remains  in  employ  of  the  hcensee.'^**  This  is  not  the  usual 
rule.  Normally  a  trade-mark  cannot  be  transferred  except 
with  the  business  of  which  it  is  the  outward  sign.  "A  trade-mark 
cannot  be  assigned,  or  its  use  Ucensed,  except  as  incidental  to 
a  transfer  of  the  business  or  property  in  connection  with  which 
it  has  been  used.  An  assignment  or  license  without  such  a  transfer 
is  totally  inconsistent  with  the  theory  upon  which  the  value  of  a 
trade-mark  depends  and  its  appropriation  by  an  individual  is 
permitted.  The  essential  value  of  a  trade-mark  is  that  it  identifies 
to  the  trade  the  merchandise  upon  which  it  appears  as  of  a  certain 
origin,  or  as  the  property  of  a  certain  person.  When  its  use  has 
been  extensive  enough  to  accomplish  that  purpose,  and  not  till 
then,  it  becomes  property, ^^  and  when  it  so  becomes  property  it  is 
valuable  for  two  purposes:  (1)  As  an  attractive  sign  manual  of 
the  owner,  facilitating  his  business  by  its  use;  (2)  as  a  guaranty 
against  deception  of  the  public.  By  familiarity  with  the  trade- 
mark attached  to  the  owner's  merchandise,  purchasers  are  enabled 
to  buy  what  they  desire,  and  are  thereby  protected  against  im- 
position and  fraud.  Disassociated  from  merchandise  to  which  it 
properly  appertains,  it  lacks  the  essential  characteristics  which 
alone  give  it  value,  and  becomes  a  false  and  deceitful  designation. 
It  is  not  by  itself  such  property  as  may  be  transferred."  ^^^ 

This  statement  appHes  equally  to  the  good-will  of  places,  build- 
ings and  the  like. 

§  23.  Duty  to  Prevent  Confusion  Resting  on  One  Who  Sells 
His  Business.  —  Where  one  sells  a  business  and  the  buyer  later 
removes  it  to  another  place,  good  faith  requires  that  the  vendor, 
should  he  chance  to  occupy  the  old  stand,  use  great  care  not  to 
do  anything  which  will  cause  the  public  to  confuse  his  new  busi- 
ness with  that  which  he  has  sold  or  which  will  deprive  his  vendee 

**  See  Nelson  v.  J.  H.  Wi7whell  &  known  to  the  public,  and  hence  valu- 

Co.,  203  Mass.  75.  able. 

3' It  should  be  noted  in  connection  ^'^MacMahan  Pharmacol  Co.  v.  Den- 

with  this   statement   that   a   trade-  ver  Chemical  Mfg.  Co.,  113  Fed.  468- 

mark,  as  distinguished  from  a  trade  74;  51  C.  C.  A.  302-1901  (citing  au- 

namo,   may  be   property  once   it  is  {\\r>v\i\cir);Fnlky.  American  West  Indies 

adopted  as  such,  although  it  has  not  Trading  Co.,  180  N.  Y.  445-1906;  73 

been  used  sufficiently  to  become  well  N.  E.  1123;  1  L.  R.  A.  N.  S.  704n. 


Transfer  of  Portraits 


47 


of  any  of  the  benefits  of  his  purchase  to  which  he  is  rightfully 
entitled.  The  same  is  true  where  the  vendors  later  occupy  stands 
near  their  former  one,  now  occupied  by  their  vendee.  ^° 

§  24.  Transfer  of  Portraits.  —  Trade-marks  and  names  often 
are  combined  with  the  portrait  of  some  person  as  well  as  his  name. 
This  fact  does  not  prevent  the  assignment  or  transfer  of  the 
name  and  portrait. ^^  The  death  of  the  person  whose  name  or 
portrait  is  used  by  a  firm  does  not  prevent  a  transfer  to  the  surviv- 
ing partners  of  the  right  to  use  the  portrait  and  name,  provided 
they  were  a  part  of  the  partnership  or  corporate  property  and 
assets;  but  unless  the  right  to  use  them  was  distinctively  a  part 
of  the  assets,  the  surviving  partners  have  no  such  right  what- 
ever, and  no  power  to  transfer  the  right  to  use  them  or  use  them 
themselves.^- 

§  25.  Rights  of  a  Manufacturer  as  to  His  Good-Will  in  a 
Name  under  which  His  Goods  Are  Sold,  not  by  Him,  but  by  a 


^°  Angier  v.  Webber,  96  Mass.  (14 
Allen)  211-1867;  92  Am.  Dec.  748. 
Two  of  three  members  of  a  firm  of 
wagoners  sold  to  the  third  their  in- 
terest and  good-will  in  the  business, 
with  the  property  used  in  it,  and 
agreed  to  do  nothing  to  "impair  or 
injure"  such  interest  and  good-will. 
The  retiring  partners  then  purchased 
stands  close  to  the  stand  of  the  pur- 
chasing partner,  engaged  in  busi- 
ness on  the  same  route  as  he,  and 
carried  goods  for  many  former  cus- 
tomers of  the  firm,  but  did  not  di- 
rectly solicit  customers.  Held,  to  be 
a  violation  of  the  agreement. 

Hall's  Appeal,  60  Pa.  St.  458-1869; 
100  Am.  Dec.  584.  Defendant,  having 
sold  to  plaintiff  for  a  valuable  con- 
sideration, the  good-will  of  an  under- 
taking business,  removed  to  a  place 
nearby  on  the  same  street  and  ad- 
vertised that  he  had  removed  from 
the  old  to  the  new  place  of  business 
and  that  he  would  there  continue  his 
former  business.  Held,  that  he  should 
be  enjoined  from  thus  holding  himself 


out  to  the  pubhc  as  continuing  the 
business. 

"  Richmond  Nervine  Co.  v.  Rich- 
mond, 159  U.  S.  293-1895;  40  L.  ed. 
155;  16  Sup.  Ct.  30;  Hoxie  v. 
Chaney,  103  Mass.  592-1887;  10  N. 
E.  713. 

42  Kidd  V.  Johnson,  100  U.  S.  617- 
1879;  25  L.  ed.  769.  S.  N.  Pike,  a 
distiller,  branded  his  goods  "S.  N. 
Pike's  Magnolia  Whiskey,  Cincin- 
nati, Ohio,"  and  formed  a  firm  to 
continue  the  business,  one  member  of 
which  was  the  defendant,  Kidd.  In 
1868,  the  firm  removed  its  business  to 
New  York,  and  the  distillery  as  well 
as  the  use  of  all  the  brands  there 
used,  were  transferred  by  Pike  to  a 
firm  of  which  complainants  were  the 
successors.  Held,  that  complainants 
had  thus  acquired  the  exclusive  right 
to  the  use  of  the  words  above  men- 
tioned as  a  trade-mark  and  were  en- 
titled to  enjoin  its  use  by  partners 
acting  under  a  license  from  Kidd, 
claiming  as  survivor  of  the  Pike 
firm. 


48 


Good-Will 


Customer  of  His.  —  Where  a  manufacturer  sells  goods  to  a  cus- 
tomer who,  in  turn,  sells  them  under  another  name,  with  the 
consent  of  the  makers;  and  the  second  concern  sells  its  business 
and  good-will,  and  with  them  transfers  also  the  name  used  by  it 
in  selling  the  goods,  the  purchasers  will  not  be  allowed  to  sell 
goods  of  another  maker  under  this  same  name.  Were  such  a 
use  of  a  name  allowed,  the  original  makers  would  lose  trade 
which  had  been  secured  by  them  in  part  through  the  merit  of 
their  goods. ^'^ 

§  26.  Transfers  in  Bankruptcy  and  in  Assignments  for  Cred- 
itors. —  Purchasers  of  good-will  and  trade  names  in  a  bank- 
ruptcy sale  or  in  a  sale  by  assignees  will  be  protected  against 
injurious  use  of  the  name  by  the  bankrupt  after  his  discharge. 
It  may  be  that  the  name  of  the  business  which  has  been  sold 


*^  Shaver  v.  Heller  &  Merz  Co., 
108  Fed.  821-24-1901;  65  L.  R.  A. 
878  (C.  C.  A.  8th  Cir.).  Heller  made 
"American  Ball  Blue."  No  one  else 
had  used  that  name.  Olmsted  &  Co. 
bought  of  Heller  bluing  which  he 
sold  as  "American  Wash  Blue." 
Shaver  bought  out  Olmsted  and  be- 
gan to  sell  bluing  not  made  by  Heller 
under  the  names  of  "American  Ball 
Blue"  and  "American  Wash  Blue," 
and  seriously  injured  the  business  of 
Heller.  They  contended  that  as  they 
bought  Olmsted's  good-will  they  had 
a  right  to  sell  any  bluing  they  wished 
under  the  name  of  "American  Wash 
Blue,"  because  Olmsted  sold  bluing 
made  by  Heller  and  not  by  himself 
under  that  name.  The  court  held: 
"That  court  (C.  C.  Iowa,  102  Fed. 
882-1900)  came  to  the  conclusion 
that  the  appellants  had  no  better 
right  to  use  the  name  "American 
Wash  Blue"  to  palm  off  the  goods  of 
other  manufacturers  as  those  made 
by  the  appellee  (Heller)  than  0.  M. 
Olmsted  &  Co.  had,  and  that  the  lat- 
ter firm  stood  in  such  a  fiduciary 
relation  to  the  appellee  (Heller)  that 
they  could  not  be  permitted  to  take 


such  action.  It  held  that  the  good-will 
of  the  business  established  under  the 
name  'American  Wash  Blue'  was  the 
property  of  the  appellee  (Heller)  and 
not  of  Shaver  who  had  bought  the 
good- will  of  Olmsted,  who  had  sold 
Heller's  Wash  Blue.  These  conclu- 
sions are,  in  our  opinion,  well  founded 
in  fact  and  in  law.  *  *  *  The 
excellence  of  the  article  and  the  in- 
troduction which  the  appellee  (Heller) 
gave  it  or  induced  Olmsted  &  Co. 
to  give  it,  *  *  *  established  the 
trade  in  it,  and  gave  that  trade 
its  value.  Purchasers  in  the  trade 
and  the  public  came  to  know,  to 
demand,  and  to  buy  the  appellee's 
manufacture  by  this  brand.  The  in- 
evitable result  is  that  the  good-will 
of  this  trade  became  the  appellee's 
propert}',  which  neither  Olmsted  Sc 
Co.  nor  their  successors  could  law- 
fully lead  away  from  it  by  fraud  or 
falsehood.  One  does  not  lose  the 
good-will  of  his  trade  in  an  article 
*  *  *  by  the  fact  that  the  con- 
sumers know  only  the  name  and  the 
excellence  of  the  article,  and  neither 
know  nor  care  who  makes  it." 


Transfers  in  Bankruptcy  and  Assignments 


49 


in  the  bankruptcy  is  composed  in  part  of  the  bankrupt's  own 
family  name  or  some  name  long  used  by  him.  Despite  this,  the 
buyer  from  the  bankrupts  is  entitled  to  be  put  in  control  of  his 
purchase  and  a  court  will  enjoin  the  bankrupt  from  resuming 
the  use  of  the  name.  This  does  not  mean  he  may  not  use  his  own 
name  or  his  firm  name  at  all.  It  does  mean  he  may  not  use  it 
except  in  a  way  to  distinguish  it  clearly  from  the  name  used  by 
the  purchasers.^*    An  assignee  for  benefit  of  creditors  may  not, 


**  Armington  &  Sims  v.  Palmer,  21 
R.  I.  109-1898;  42  Atl.  308;  43  L. 
R.  A.  95.  Complainants  were  part- 
ners making  engines  under  the  name 
"Armington  &  Sims."  They  sold  out 
at  auction  to  Scott  who,  with  other 
respondents,  formed  the  corporation 
—  Armington  and  Sims  Company. 
Sims  protested  in  writing  against 
use  of  the  name  at  the  first  directors' 
meeting.  Armington  was  not  pres- 
ent. Respondents  claimed  Arming- 
ton &  Sims  were  not  in  business  after 
corporation  was  formed,  hence  could 
not  suffer  injury.  Held,  no  defense, 
as  the  company  might  resume  at  any 
time. 

Hudson  V.  Osborne,  39  L.  J.  N.  S. 
Ch.  79-1869.  The  "good-will"  in 
a  title  to  a  manufactory  of  certain 
provisions  had  been  sold  by  as- 
signees in  bankruptcy  to  the  plain- 
tiffs, who  continued  to  carry  on  un- 
der the  title  of  "Osborne  House"  a 
business  such  as  that  which  the  de- 
fendant Osborne,  the  bankrupt,  had 
formerly  conducted  under  the  same 
name.  Osborne,  having  been  dis- 
charged in  the  bankrupt  proceedings, 
commenced  anew,  and  used  upon  his 
new  place  of  business  the  words 
"Osborne  House,"  where  he  carried 
on  the  same  kind  of  manufacturing 
as  before.  He  put  up  signs  on  his 
buildings  and  issued  circulars  calcu- 
lated to  lead  the  public  to  beheve 
that  he  was  conducting  the  old  busi- 


ness. The  court  said  that  he  had  no 
right  to  use  the  words  "Osborne 
House"  as  holding  out,  in  any  man- 
ner, that  he  was  carrying  on  business 
in  continuation  of  or  in  succession 
to  the  business  originally  conducted 
by  Osborne,  the  defendant.  He  might 
have  said  that  he  had  been  twenty- 
two  years  at  the  "Osborne  House," 
or  that  one  of  his  partners  had  been 
for  many  years  managing  there,  but 
he  must  not  appropriate  to  himself 
the  very  words  which  he  selected  to 
designate  the  business. 

Wilmer  v.  Thomas,  74  Md.  485-1891 ; 
22  Atl.  403 ;  13  L.  R.  A.  380.  Under  an 
assignment  for  the  benefit  of  creditors 
by  an  insolvent  manufacturing  com- 
pany, and  upon  a  sale  by  the  assignee, 
after  advertising  that  the  mills  were 
to  be  sold  as  a  going  concern,  the 
trade-mark  and  trade  name  (in  this 
case  the  "Druid  Mills")  were  held  to 
pass  to  the  purchaser. 

Peck  Bros.  &  Co.  v.  Peck  Bros. 
Co.,  113  Fed.  291-1902;  51  C.  C. 
A.  251.  A  trade  name  passes  by 
sale  by  the  receiver  of  an  insol- 
vent corporation  which  had  oper- 
ated under  that  name  and  buyers 
could  prevent  others  using  it.  Kidd 
V.  Johnson,  100  U.  S.  617-1879;  25 
L.  ed.  769;  Brovon  Chemical  Co.  v. 
Meyer,  139  U.  S.  540-1890;  35  L. 
ed.  247;  11  Sup.  Ct.  65;  Richmond 
Nervine  Co.  v.  Richmond,  159  U.  S. 
293-1895;   40   L.    ed.    155;    16   Sup. 


50 


Good-Will 


in  disposing  of  assets,  do  anything  which  will  prevent  the  assignor 
from  reaping  all  benefit  which  he  lawfully  may,  from  his  name 
and  reputation.  Selhng  labels  bearing  the  assignor's  name  has 
been  held  to  be  an  unauthorized  act  on  the  part  of  such  an  as- 
signee.'^ 

§  27.  Rights  of  Retiring  Stockholders  and  Others  in  Cor- 
porate Names.  —  It  has  been  held  that  one  who  has  originated 
a  trade-mark  or  trade  name  and  has  joined  a  company  formed  to 
push  the  brand  of  goods  to  which  the  name  is  applied,  and  has 
allowed  it  to  use  the  mark,  will  not  be  heard  later  to  question 
the  title  of  the  company  to  the  name.  This  because  the  name 
has   become  a  part  of  the  company's  property. ^^    Greacen  v. 


Ct.  30;  Sarrazin  v.  Irby  Cigar  & 
Tobacco  Co.,  Ltd.,  35  C.  C.  A.  496; 
93  Fed.  624-1899;  46  L.  R.  A.  541n; 
LePage  Co.  v.  Riissia  Cement  Co., 
2  C.  C.  A.  555;  51  Fed.  941-1892; 
17  L.  R.  A.  354;  Bank  of  Tomah  v. 
Warren,  94  Wis.  151-1896;  68  N. 
W.  549;  A.  D.  Warren  v.  Warren 
Thread  Co.,  134  Mass.  247-1883;  see 
Hazelton  Boiler  Co.  v.  Hazelton  Tri- 
pod Boiler  Co.,  142  111.  494-1892;  30 
N.  E.  339;  Frazer  v.  Frazer  Lubri- 
cator Co.,  121  111.  147-1886;  13  N. 
E.  639;  Celluloid  Mfg.  Co.  v.  Cel- 
lonite  Mfg.  Co.,  32  Fed.  94-1887; 
R.  W.  Rogers  Co.  v.  Wm.  Rogers 
Mfg.  Co.,  17  C.  C.  A.  576;  70  Fed. 
1017-1895;  Investor  Pub.  Co.  v.  Dob- 
inson,  72  Fed.  603-1896;  C.  S.  Hig- 
gins  V.  Higgins  Soap  Co.,  144  N.  Y. 
462-1895;  18  N.  E.  714;  Holmes, 
Booth  &  Haydens  v.  Holmes,  Booth 
&  Atwood  Mfg.  Co.,  37  Conn.  278- 
1870. 

Chesterman  v.  Seeley,  18  Pa.  Co. 
Ct.  631-1896;  5  Pa.  Dist.  757  (head- 
note):  "In  the  absence  of  proof 
to  the  contrary,  it  is  presumed  that 
a  purchaser  of  all  property  of  a 
firm,  including  good-will,  at  a  receiv- 
er's sale,  acquires  as  to  the  name  of 
the  firm  a  right  to  use  the  firm  name 


in  such  manner  as  to  indicate  that 
the  purchaser  is  the  successor  to  the 
dissolved  firm.  Such  a  use  of  the 
firm  name,  although  it  includes  or 
consists  in  the  name  of  an  individual, 
is  the  purchaser's  exclusive  right,  and 
neither  the  individual  whose  name  is 
so  used,  nor  anyone  else,  can  be  al- 
lowed to  interfere  with  it." 

« Matter  of  Adams,  24  Misc.  (N. 
Y.)  293-1898;  53  N.  Y.  Supp.  666. 
The  assignee  for  the  benefit  of  cred- 
itors of  Robert  Adams,  a  manufac- 
turer, who  had  been  doing  business 
under  the  name  "R.  &  H.  Adams," 
first  sold  to  one  Robert  F.  Adams, 
certain  goods  manufactured  by  the 
assignor,  and  a  large  number  of 
labels  bearing  the  name  above  men- 
tioned. Held,  that  the  assignee 
should  not  be  authorized  to  sell  the 
right  to  use  "R.  &  H.  Adams"  as 
a  trade  name  or  trade-mark,  as  this 
would  tend  to  confusion,  and  conflict 
not  only  with  the  rights  of  the  pur- 
chaser of  the  labels,  but  also  with 
the  right  of  the  assignor,  upon  re- 
suming business,  to  use  his  own  name 
and  avail  himself  of  his  personal 
reputation. 

*^  Filkins  v.  Blackman,  13  Blatchf. 
(Conn.)    440-1876;    Solis    Cigar    Co. 


Soliciting  Old  Customers  51 

Bell  ^''  is  authority  for  the  doctrine  that  where  a  trade-mark  or 
trade  name  is  owned  by  one  who  enters  into  partnership  with  an- 
otlier  for  the  manufacture  of  the  article  to  which  it  appHes,  the 
title  to  the  trade-mark  does  not  pass  to  the  partnership  except 
by  express  agreement ;  especially  where,  from  the  circumstances  of 
the  case,  it  may  be  inferred  that  it  was  not  the  actual  intention 
of  the  parties  that  the  trade-mark  should  be  partnership  property. 

Not  only  is  a  retiring  partner  who  sells  his  interest  in  the 
business  thereafter  limited  in  his  use  of  his  own  name,  if  that 
be  a  part  of  the  name  of  the  firm,  but  a  stockholder  whose  name 
is  a  part  of  the  name  of  the  corporation  may  not,  by  the  mere 
act  of  selling  his  stock,  at  once  regain  full  possession  and  use  of 
his  name  which  now  is  also  the  name  of  the  corporation.  His 
rights  to  the  name  are  limited,  and  he  may  use  it  only  in  so  far 
as  his  use  will  not  interfere  with  the  business  of  the  corporation. 
This  is  held,  on  the  ground  that  he  is  presumed  to  have  sold  his 
stock  in  good  faith.  He  must,  therefore,  respect  the  right  and 
interest  of  the  corporation  in  its  name  and  good- will.  ^^  See  chap- 
ter on  "Corporate  Names." 

§  28.  Soliciting  Old  Customers.  —  In  retiring  from  a  firm  or 
corporation  the  one  so  retiring  does  not  agree  that  the  custom- 
ers whom  he  has  brought  to  the  concern  by  his  personal  effort 
will  continue  to  patronize  the  business  he  has  left,  even  when 

V.  Pozo,  16  Colo.  388-1891;  26  Pac.  Telephone   Company   and   began   to 

556.     The  inventor  of  a  trade-mark  compete  with  the  old  company,  with 

or  trade  name  having  permitted  its  an  office  in  the  same  tjuilding.    Decem- 

use  by  a  company  formed  to  carry  ber,  1900,  charter  of  the  old  company 

on  the  business  and  in  which  he  was  had  expired.    McFell  was  one  of  the 

largely  interested,   no   objection   can  signers  of  a  petition  for  a  Hcense  for 

be  made  to  its  title,  to  the  mark  or  a  new  company  under  same  name, 

name,  because  of  the  lack  of  a  formal  which  was  granted  May,  1901.    Held, 

transfer  thereof  to  the  company.  "that  when  he  sold  out  his  stock  in 

*''  115     Fed.     553-1902      (C.     C.  the  company  and  his  interest  in  its 

N.  J.).  business  to  McWade  for  a  valuable 

*^  See  also  discussion  in  chapter  on  consideration,  as  he  did,  he  could  not 
"Family  Names."  McFell  Electric  afterward  resume  the  use  even  of  his 
<fe  Telephone  Co.  v.  McFell  Electric  own  name  in  carrying  on  the  same 
Co.,  110  111.  App.  182-85-1903.  Mc-  business  during  the  lifetime  of  the 
Fell  was  an  incorporator  of  the  McFell  corporation  in  such  a  way  as  to  mis- 
Electric  Company  in  1890.  In  April,  lead  the  public."  Citing  Frazer  v. 
1900,  he  sold  his  interest.  May,  1901,  Frazer  Lubricator  Co.,  121  111.  147- 
he  formed  the  McFell  Electric  and  1886;  13  N.  E.  639. 


52  Good-Will 

he  agrees  not  to  enter  that  Hne  of  business  for  a  certain  period. 
Such  customers  may  or  may  not  remain  customers  of  the  old 
concern.  There  are  cases  which  hold  that  a  person  voluntarily 
selling  his  interest  in  a  going  concern  may  not  thereafter  deal 
even  with  those  of  the  former  customers  of  the  old  concern  who 
come  to  hhn  without  solicitation  by  him.^^"  In  Leggott  v.  Barrett, 
this  view  of  the  law  was  disapproved  on  appeal.  In  leaving  the 
old  house,  the  partner  or  stockholder  who  is  selling  out,  sells  that 
part  of  his  interest  in  it  which  legitimately  attaches  to  the  name 
and  the  location  or  stand  of  that  business,  as  contrasted  with  those 
interests  which  attach  to  him  personally.  The  latter  he  resigns 
to  the  old  house  only  by  special  agreement.  He  sells  only  such 
of  the  trade  as  the  house  can  keep  its  grip  on  regardless  of  his 
leaving,  provided  he  does  thereafter  nothing  to  fraudulently  de- 
prive them  of  this  business. 

Where  a  partnership  dissolution  agreement  provides  that  no 
further  business  shall  be  done  under  the  name  of  the  firm,  each 
partner  is  considered  to  have  reserved  the  full  right  to  use  his 
own  name.^^  If  one  of  the  partners  buys  the  good-will  and  old 
stand,  and  continues  the  business,  he  has  the  right  merely  to 
conduct  the  business  as  a  going  concern  with  the  probability 
in  his  favor  that  customers  of  the  old  company  will  continue  to 
deal  with  it. 

Some  jurisdictions  allow  to  an  ex-partner  all  rights  of  adver- 
tising and  soliciting  of  trade  except  to  seek  personally  the  trade 
of  the  customers  of  the  former  concern.  Other  courts  have  said 
that  to  refuse  personal  access  to  former  customers  is  in  a  sense 
restraint  of  trade,  and  all  such  restraint  must  arise  out  of  personal 
agreement,  and  not  from  construction  of  law.^° 

^^  Ginesi  v.  Cooper,  L.  R.  [14  Ch.  Ginesi  v.  Cooper  &  Co.,  14  Ch.  Div. 

D.  W.]  596-1880;    Leggolt  v.  Barrett,  596-1880;  Leggott  v.  Barrett,  15  Ch. 

L.  R.  [15  Ch.  D.  W.]  306.  Div.   306-1880,   see   appeal;    Walker 

«  Cottrell  V.  Babcock  Printing  Press  v.  Mottram,   19  Ch.  Div.  355-1881; 

Mfg.  Co.,  54  Conn.  122;  6  Atl.  791-  Laboiichere  v.  Dawson,  L,  R.  13  Eq. 

1886.  Cas.  322-1872;  Pearson  v.  Pearson, 

50  These  cases  deal  with  the  ques-  L.  R.  27  Ch.  Div.  145-1884;  Hall's 

tion:  Cook  v.  Cnllingridge,  Jacob,  607-  Appeal,  60  Pa.  St.  458-1869;  Angier 

1825;  Cruttwell  v.  Lye,  17  Ves.  335-  v.    Webber,  14   Allen    (Mass.),  211- 

1810;  Johnson  v.  Helleley,  2  De  G.  1867;  Bergamini  v.  Bastian,  35  La. 

J.  &  S.  446-1864;  Churton  v.  Doug-  Ann.    60-1883;    Hanna   v.   Andrews, 

las,  28  L.  J.  N.  S.  (Ch.)  841-1859;  50  Iowa,  462-1879. 


Soliciting  Old  Customers 


53 


The  rule  to  be  drawn  from  the  authorities  seems  to  be  that, 
on  dissolution  of  a  partnership  by  reason  of  the  termination  of  the 
agreement  of  partnership,  old  customers  may  be  solicited  person- 
ally and  in  any  other  legitimate  way  be  a  retiring  partner,  who  is 
not  bound  by  special  agreement  not  to  compete  with  those  running 
the  old  concern;  but  in  doing  so  he  may  not  use  any  method  which 
will  create  confusion  in  the  mind  of  the  public  as  to  which  is  his 
own  new  business  and  which  is  the  old  business.  If  either  partner 
desires  more  he  must  see  to  it  that  it  is  provided  for  in  a  special 
agreement.  ^^ 

This  is  not  the  rule  in  most  jurisdictions,  where  there  is  a  dis- 
solution by  voluntary  act  of  the  partners. 

The  extremes  to  which  courts  have  gone  in  discussing  the  rule 
are  very  well  illustrated  by  Ginesi  v.  Cooper  &  Co.,^^  where 
James,  L.  J.,  writes  as  follows:  ''The  command  'Thou  shalt  not 
steal ! '  is  as  much  a  portion  of  the  law  of  courts  of  equity  as  it  is 
of  courts  of  law.    The  proposition,  as  I  understand  it,  which  has 


51  Cottrell  V.  Babcock  Printing  Press 
Mfg.  Co.,  54  Conn.  122;  6  Atl.  791- 
1886  (headnote):  "A  partner  who, 
upon  dissolution  of  partnership,  pur- 
chases the  good-will  secures  merely  the 
right  to  conduct  the  old  business  at 
the  old  stand,  and  in  the  absence  in 
the  contract  of  dissolution  or  stipu- 
lations to  the  contrary,  the  retir- 
ing partner  may  lawfully  establish  a 
similar  business,  even  in  the  neighbor- 
hood, and  by  advertisement,  circular, 
card,  and  personal  solicitation,  invite 
the  pubUc  generally,  including  the 
customers  of  the  old  firm,  to  come 
there  and  purchase  of  him."  But  he 
must  not  so  advertise  and  solicit  as 
to  lead  to  the  behef  that  he  is  the  suc- 
cessor to  the  old  firm,  or  that  the  pur- 
chaser of  the  good-will  is  not  carrying 
on  the  business  formerly  conducted  by 
the  old  firm. 

Hoxie  v.  Chaney,  143  Mass.  592- 
1887;  10  N.  E.  713.  Hoxie  sold  his 
trade-mark,  good-will,  etc.,  in"  A.  N. 
Hoxie's    Mineral    Soap,"    and    then 


began  to  manufacture  soap  and 
put  up  his  soap  in  similar  wrap- 
pers bearing  the  trade-mark  he  had 
sold.  Held,  he  had  the  right  in  ab- 
sence of  express  stipulation  in  the 
sale,  to  again  enter  the  same  business, 
but  he  had  no  right  to  represent  him- 
self as  successor  of  the  former  busi- 
ness or  as  owner  of  the  trade-marks, 
and  an  injunction  was  granted,  re- 
straining him  from  interfering  with 
vendee's  business  by  representing 
himself  as  successor  of  the  late  firm. 
Assets  of  a  partnership  include  trade- 
marks and  good-will.  The  retiring 
partner  here  was  enjoined  from  "vir- 
tual representation  of  himself  as  the 
successor  to  the  business  of  the  old 
firm,"  and  was  directed  "not  to  inter- 
fere or  compete  with  the  business"  of 
the  old  firm  "by  representing  himself, 
either  directly  or  by  implication,  as 
the  successor  of  the  late  firm  or  as 
doing  the  same  business  that  was  done 
by  them." 
82 14  Ch.  Div.  596-98-99-1880. 


54  Good-Will 

been  gravely  argued  before  me  is  this,  that  a  trader  who  has  sold 
for  value  his  business  and  good-will  to  another  man  is  entitled, 
notwithstanding,  to  sohcit  his  old  customers  to  deal  with  him 
just  as  if  no  sale  had  ever  taken  place.  In  my  opinion,  the  de- 
fendants having  sold  the  business,  the  attempt  to  take  it  away 
from  the  plaintiff  in  the  way  I  have  mentioned,  is  neither  a  lawful 
nor  an  honest  attempt;  and  I  consider  that  I  should  not  be  per- 
forming my  duty  in  an  adequate  and  proper  manner  if  I  hesitated 
for  a  moment  to  state  that  that  was  my  opinion"  (id.  p.  598). 
''The  present  injunction  asked  from  me  is  only  to  restrain  the 
defendants  from  soliciting  the  old  customers  and  from  taking 
away  the  plaintiff's  business,  which,  of  course,  must  be  right 
anyhow;  but  if  I  had  been  asked,  I  certainly  should  have  pre- 
vented their  dealing  with  the  old  customers.  Can  it  be  tolerated 
that  men  who  have  sold  their  business,  including  the  benefit  of 
their  connection  —  here  they  have  sold  their  trade,  business,  and 
'  good-will ; '  —  I  will  come  in  a  moment  to  what  '  good-will ' 
means  —  can,  immediately  after,  take  away  the  benefit  of  that 
connection  so  sold.  I  gave  an  illustration  during  the  course 
of  the  argument,  which  I  will  repeat.  Suppose  a  solicitor  sells 
his  business,  say  at  five  years'  purchase,  which  is  by  no  means 
uncommon,  could  he,  having  offices  on  the  first  floor,  imme- 
diately afterward  go  on  to  the  ground  floor,  paint  up  his  name 
and  receive  his  clients  as  usual  because  they  choose  to  come  to 
him,  even  if  he  did  not  actually  ask  them  to  co^ne  and  transact 
their  business  with  him?  The  answer  would  be  that  he  was 
stealing  that  which  he  had  sold,  and  any  conduct  more  outrageous 
or  more  opposed  to  morality  or  law  could  not  well  be  imagined  "^^ 
(at  p.  599). 

s^  Ginesi  v.  Cooper  &  Co.,  14  Ch.  business,  and  that  they  had  trans- 
Div.  596-1880.  Prior  to  1887,  de-  ferrcd  it  to  the  plaintiff.  In  1879, 
fendants  carried  on  business  as  stone  defendants  recommenced  business  as 
merchants  under  the  style  of  "Cooper  stone  merchants,  as  "Samuel  Cooper 
&  Hampson."  They  are  now  called  &  Company,"  and  solicited  business 
"Samuel  Cooper  &  Company."  The  from  the  customers  of  the  old  firm, 
plaintiff  is  a  stone  merchant  of  Leeds,  They  distributed  business  cards  and 
who,  in  1877,  purchased  the  business  sent  their  former  manager  around 
of  Cooper  &  Hampson.  The  good-will  for  orders.  This  is  a  motion  for  an 
was  included.  The  day  the  business  injunction  restraining  the  defendants 
changed  hands.  Cooper  &  Hampson  from  soliciting  orders  from  their 
sent  circulars  to  their  customers  an-  former  customers, 
nounring  that  tliey  had  retired  from 


Soliciting  Old  Customers  55 

Labouchere  v.  Dawson,^'^  holds  that  one  who  sells  the  good-will 
of  a  business  is  not  precluded  from  engaging  in  a  competing  busi- 
ness, or  from  advertising  his  business,  but  he  cannot  directly 
solicit  trade  from  the  customers  of  the  old  business.  In  Pear- 
son V.  Pearson, ^'^  James  Pearson,  the  defendant,  had  assigned  all 
his  interest  in  various  property  derived  under  his  father's  will, 
including  the  business  of  an  earthenware  manufacturer,  carried 
on  by  his  father  under  the  name  James  Pearson,  to  plaintiff,  with 
an  express  provision,  however,  that  defendant  should  be  at 
liberty  to  carry  on  a  similar  business  under  his  own  name,  while 
plaintiff  was  to  discontinue  using  the  name  James  Pearson.  Plain- 
tiff sought  to  enjoin  the  defendant  from  sohciting  the  old  cus- 
tomers of  the  business  in  which  defendant  had  assigned  his  in- 
terest. Held,  that  defendant  had  this  right  and  would  have  it 
even  in  the  absence  of  the  express  provision  above  mentioned. 

This  case  was,  however,  disapproved  by  the  House  of  Lords  in 
Trego  v.  Hunt,^^  and  that  tribunal  adopted  the  rules  of  Labouchere 
V.  Dawson J'^'^  The  long  existing  confusion  in  the  state  of  New 
York  has  been  terminated  since  the  publication  of  the  first  edition 
of  this  book  by  the  case  of  Von  Bremen  v.  MacMonnies,^^^'  in 
which  the  doctrine  of  Trego  v.  Hunt  is  adopted  as  the  law  of  that 
state. 

Trego  v.  Hunt  has  been  followed  in  Massachusetts,  New  Jersey, 
Michigan,  Rhode  Island,  Illinois  and  Pennsylvania. 

The  Illinois  court  states,  that  the  rule  as  to  soliciting  old  cus- 
tomers is  unsettled.  It  cites  Trego  v.  Hunt,^^  as  authority  for 
the  English  rule  that  a  vendor  of  good-will  may  not  canvass  cus- 
tomers and  solicit  them  not  to  deal  with  his  vendee,  and  urge 
them  to  deal  with  him,  and  adopts  this  rule,  citing  various  au- 
thorities." "We  do  not  think  that  the  defendant  ought  to  be 
allowed,  after  selling  and  warranting  a  good-will  to  the  com- 

"  L.    R.    13   Eq.   322-1872.     La-  68«  Labouchere  v.  Dawson,  L.  R.  13 

bouchere  v.  Dawson  was  overruled  by  Eq.  322.  1872. 

Pearson  v.  Pearson,  L.  R.  27  Ch.  Div.  '8&  200  N.  Y.  41-1910. 

145-1884,  which  in  turn  was  over-  This  case  contains  a  very  free  dis- 

ruled  by  Trego  v.  Hunt  (1896),  App.  cussion  of  the  right  and  obhgations  of 

Cas.  7,  which  case  followed  Labou-  the  vendor  of  good-will. 

chere  v.  Dawson.  ^^  Myers  v.  Kalamazoo  Buggy  Co., 

"  L.  R.  27  Ch.  Div.  145-1884.  54  Mich.  215;  20  N.  W.  545;  52  Am. 

f**  (1896)  App.  Cas.  7.  Rep.  811;  Coal  Co.  v.  Spangler,  54 

N.  J.  Eq.  354;  34  Atl.  932. 


56 


Good-Will 


plainants,  to  purposely  endeavor  to  prevent  their  receiving  the 
benefit  of  it,  or  to  attempt  to  disturb  them  in  its  enjoyment.  The 
locaHty  chosen  by  her  was  not  near  enough  (600  feet)  to  have 
that  effect.  But  to  canvass  old  customers  of  the  firm  and  en- 
deavor to  dissuade  them  from  continuing  to  deal  with  complain- 
ants was  a  direct  interference  with  the  property  which  defendant 
sold,  with  the  purpose  of  destroying  it  and  preventing  com- 
plainants having  the  benefit  and  advantage  of  it.  The  attempt 
to  appropriate  the  telephone  number  *  *  *  was  of  the  same 
character."  ''^ 

§  29.  Sale  of  Name  or  Business  by  Originator  of  an  Article. 
—  One  who  has  originated  an  article,  on  selling  out  the  good-will 
of  his  business,  may  still  advertise  that  he  originated  the  article 
and  continues  to  sell  it,  in  the  absence  of  a  stipulation  to  the  con- 
trary. He  may  also  state  honestly  where  he  formerly  lived,  the 
experience  he  has  had,  the  skill  he  possesses.  ^^ 


^^Renft  V.  Reimer,  200  III.  386- 
1902;  65  N.  E.  720. 

^^  Fish  Bros.  Wagon  Co.  v.  Fish, 
82  Wis.  546-67-1892;  16  L.  R.  A. 
453;  52  N.  W.  595.  "The  defend- 
ants have  the  lawful  right  to  honestly 
and  truthfully  state  where  they  for- 
merly resided,  the  experience  they 
have  respectively  had,  and  the  skill 
they  respectively  possess  in  the  manu- 
facture of  wagons  and  other  vehicles; 
but  they  have  no  right  to  represent 
their  present  business  as  the  same 
which  they  formerly  conducted  at 
Racine.  The  circular  addressed  'To 
Our  Old  Customers  and  the  Imple- 
ment Trade,'  issued  by  Fish  Brothers 
and  Company,  and  mentioned  in  the 
complaint  and  the  foregoing  state- 
ment, is,  to  a  limited  extent,  objec- 
tionable on  this  ground;  as  for  in- 
stance, where  it  speaks  of  their 
'  change  of  location '  and  '  firm  name,' 
'Fish  Brothers,'  'formerly  of  Ra- 
cine, Wisconsin,'  and  for  the  'first 
time  since  1883  we  shall  be  able  to 
furnish  our  patrons  with  the  genuine 


Fish  Brothers  and  Company  wagon, 
fully  up  to  our  old  standard  of  that 
date.'  But  the  defendant  may  truth- 
fully and  in  good  faith  publish 
the  good  qualities  and  material  of 
the  wagons  and  vehicles  manu- 
factured by  them,  and  their  su- 
perior facilities  for  the  manufacture 
of  the  same  at  South  Superior.  In 
other  words,  their  advertisements  and 
marks  must  truthfully  and  in  good 
faith  refer  to  their  own  manufac- 
tures, trade,  and  business,  and  not 
to  those  of  the  plaintiff." 

White  V.  Trowbridge,  216  Pa.  St. 
11-1906;  64  Atl.  862.  Defendant 
made  chocolate  chips,  and  claimed 
to  be  the  originator  of  that  par- 
ticular kind  of  confectionery,  to 
which  he  applied  the  name  "Trow- 
bridge's Chocolate  Chips."  He  ad- 
mitted the  plaintiffs  to  a  part- 
nership which,  after  two  years, 
was  dissolved,  the  defendant  selling 
and  assigning  to  plaintiffs  all  his 
rights  in,  or  connected  with,  the 
business  including  the  good-will.    De- 


Effect  of  Locality  on  Transfers  of  a  Business     57 

§  30.  Effect  of  Locality  on  Transfers  of  a  Business.  —  It  is 
fraud  for  a  partner  who  sells  to  an  associate  his  share  of  the 
good-will  of  a  partnership  to  send  notices  of  his  opening  a  new 
office  in  the  same  locality  as  the  old  office,  even  after  a  lapse  of 
several  years  after  the  sale.^° 

It  is  not  unfair  for  the  vendor  of  a  newspaper  to  set  up  a  new 
plant  and  publish  another  newspaper  in  the  same  locality  served 
by  his  former  paper. ^^ 

§  31.  Partners'  Rights  in  the  Partnership  Name,  on  Dissolu- 
tion. —  A  retiring  partner  who  leaves  his  firm  by  mutual  consent 
is  usually  free  to  use  his  name  after  leaving  a  partnership,  in  the 
absence  of  express  stipulation  to  the  contrary;  but  should  he  use  it 
in  competition  with  the  old  concern,  he  must  not  in  any  way  hold 
himself  out  as  connected  with  the  old  business.  That  is  the 
only  limitation  on  his  right  to  his  own  name,  unless  there  be 
specific  contract  provisions  as  to  it  in  the  dissolution  articles.^^ 


fendant  within  a  few  months  began  in 
the  same  city  the  manufacture  of  the 
same  sort  of  confectionery,  marking 
the  packages  "Chocolate  Chips,"  and 
placing  thereon  his  name,  W.  S. 
Trowbridge.  He  solicited  trade  gen- 
erally and  described  himself  as  the 
"originator  of  the  Chocolate  Chips." 
His  goods  and  packages  as  to  mark- 
ings, labels,  and  dress  were  sufficiently 
differentiated  from  plaintiffs'.  Held, 
that  defendant  was  within  his  rights; 
that  if  the  intention  of  the  parties 
had  been  that  the  defendant  should 
not  engage  in  a  competing  business, 
that  should  have  been  expressly  stip- 
ulated. 

^^Foss  V.  Rohy,  195  Mass.  292; 
81  N.  E.  199-1907.  Defendant  and 
plaintiff  had  formerly  practiced  den- 
tistry as  partners  in  Boston,  many  of 
their  patients  coming  from  places  out- 
side Boston.  The  partnership  was 
dissolved  and  defendant  conveyed  to 
Foss  his  interest  in  the  business. 
After  three  years,  he  began  to  practice 
again  in  Boston,  sent  circulars  to  pa- 


tients of  the  old  firm  soliciting  their 
patronage,  referring  to  his  connection 
with  the  old  firm,  and  thus  attracted 
many  of  these  former  patients.  Held, 
that  this  was  inconsistent  with  the 
covenant  that  would  be  implied  from 
the  transfer  of  his  interest  in  the  good- 
will that  he  would  not  practice  in  the 
same  locality  under  such  conditions 
as  to  impair  the  value  of  the  good- 
will transferred  by  him.  Defendant 
enjoined  from  practicing  in  Boston; 
damages  of  plaintiff  to  be  assessed. 

«i  Rapp  V.  Over,  3  Brewst.  (Pa.) 
133-1869.  Defendant,  owning  a  news- 
paper called  "The  Bedford  Inquirer," 
sold  it,  with  all  the  stock  and  "good- 
will" to  M.,  and  afterward  began  to 
publish  another  newspaper  in  the 
same  place  under  the  name  of  the 
"Bedford  Patriot."  Held,  that  the 
defendant,  in  the  absence  of  any 
express  agreement  to  the  contrary, 
was  at  liberty  to  publish  such  a  com- 
peting newspaper. 

'2  Thynne  v.  Shove,  45  Ch.  Div. 
577-80-1890.    Thynne  sold  to  Shove 


58  Good-Will 

If,  upon  the  dissolution  of  a  firm,  the  partners  divided  among 
themselves  the  tangible  assets,  nothing  being  done  or  said  re- 
garding the  use  of  the  firm  name,  the  name  is  an  undivided  asset 
of  the  partnership,  which,  upon  dissolution,  belongs  to  both  part- 
ners in  common,  so  that  one  may  not  enjoin  the  use  of  it  by  the 
other.  If,  however,  the  whole  business  and  good-will  is  sold  upon 
the  dissolution,  the  trade  name  would  also  pass  to  the  purchaser." 

A  sale  by  one  partner  of  his  entire  interest  in  a  dentistry  part- 
nership has  been  held  to  warrant  a  court  in  holding  that  there 
was  an  implied  contract  that  the  vendor  would  not  again  practice 
in  the  locality  under  such  conditions  as  would  impair  the  value 
of  the  good- will  sold  by  him.  To  begin  practice  in  the  same  town 
and  send  notices  to  former  patients  has  been  held  to  be  an  impair- 
ment of  the  value  of  the  good-will. ^"^  A  former  partner  will  not 
be  allowed  to  make  a  colorable  use  of  the  name  of  a  person  who 
was  once  associated  with  him  in  business,  even  by  nominally  going 
into  a  new  partnership  with  someone  of  the  same  name.  The  new 
association  must  be  a  bona  fide  one,  or  the  court  will  regard  it 
as  an  unfair  attempt  to  obtain  the  custom  of  the  former  concern.^'^ 

A  partner  who  has  retired  from  a  firm  which  bore  his  name, 

"all  the  beneficial  interest  and  good-  ^* Foss  v.  Roby,  195  Mass.  292;  81 

will  of   the  said  Arthur  Thynne  in  N.  E.   199-1907;  see  note  59,  supra, 

the  said  trade  or  business  of  a  baker  for  statement  of  this  case, 

and  pastry  cook,  so  carried  on  by  "  Hildreth  v.  McCaul,  70  App.  Div. 

him  as  aforesaid."     Plaintiff  alleged  (N.    Y.)    162-1902    (1st    Dept.);    74 

that  defendant  issued  cards  in  plain-  N.  Y.  Supp.  1072.     Hildreth  &  Se- 

tiff's  name  intimating  to  the  public  gelken    had    for    many    years    been 

that  plaintiff  was  still  carrying  on  the  dealers  in  honey,   beeswax,   etc.,   at 

business.    Held,  by  Sterling,  J.,  that  120   and    122   West   Broadway.     In 

defendant  "has  the  right  to  use  the  May,  1901,  they  moved  to  another  lo- 

name  of  the  assignor  for  the  purpose  cation,    whereupon    defendant,    who 

of  showing  that  the  business  is  the  had  many  years  before  been  for  a 

business  formerly  carried  on  by  the  while  a  member  of  the  firm,  moved 

assignor;  and  he  has  the  full  right  to  into  the  old  place  and  opened  busi- 

use  it,  subject  to  this:  that  he  must  ness    under    the    name    "Hildreth- 

not  exercise  that  right  so  as  to  ex-  McCaul  Company"  with  "Joseph  M. 

pose  the  assignor  to  anj^  liability  by  McCaul,  Prop."  in  small  letters  below, 

holding  him  out  to  be  the  real  owner  He  claimed  to  have  formed  a  part- 

of  the  business.     That  is   the  only  nership  with  one  Hildreth,  a  former 

limit  of  the  defendant's  right  to  use  member  of  plaintiff's  firm,  but  there 

the  plaintiff's  name."  was  evidence  tending  strongly  to  show 

*'  Banks  v.  Gibson,  34  Beav.  566-  that  there  was  no  bona  fide  partner- 

1865.  ship.    It  also  appeared  that  custom- 


Effect  of  Locality  on  Transfers  of  a  Business      59 

or  a  member  of  a  corporation  which  used  his  name  who  sells 
his  interest  in  the  corporation  totally  or  nearly  so,  may  not  pre- 
vent the  remaining  owners  of  the  firm  or  corporation  from  stating 
that  they  are  continuing  the  old  business.^^ 

Where  Kottler  did  business  as  "H.  Kottler  &  Co."  and  then 
took  in  Lepow  and  continued  to  use  the  same  name  for  the  new 
partnership,  it  was  held  that  after  three  or  four  years  had  passed 
and  the  firm  was  dissolved,  Lepow  could  not,  in  the  absence  of 
special  provision  prevent  Kottler  from  still  using  the  name  H. 
Kottler  &  Co.,  although  it  was  intimated  that  Lepow  would  be 
enjoined  from  using  the  sign  "L.  Lepow,  formerly  (in  small 
letters)  H.  Kottler  &  Co." 

It  would  seem  that  both  these  rulings  might  result  in  confusion 
and  the  better  decision  in  cases  of  this  sort  would  be  to  limit 
both  parties  to  such  use  of  the  firm  name  as  could  not  cause  con- 
fusion as  to  which  partner  was  carrying  on  the  old  business.^^ 

Vice-Chancellor  Plumer  said  that  "sl  person  not  a  lawyer 


ers  had  been  deceived  by  circulars 
issued  by  defendant  into  supposing 
him  to  be  plaintiff's  successor.  Held, 
that  the  defendant  was  not  entitled 
to  use  the  name  Hildreth  as  he  had 
been  doing,  and  that  he  should  be  en- 
joined from  using  it  at  all  until  the 
further  order  of  the  court. 

^^  Smith  V.  David  H.  Brand  &  Co., 
67  N.  J.  Eq.  529-1904;  58  Atl.  1029. 
Complainant,  William  Smith,  had  for 
many  years  been  in  partnership  with 
David  H.  Brand  under  the  firm  name 
"Brand  &  Smith."  In  1901,  the  part- 
nership was  dissolved  and  the  defend- 
ant corporation,  "David  H.  Brand  & 
Co.,"  was  organized  by  the  two  part- 
ners and  one  John  H.  Brand.  The 
two  partners  conveyed  to  this  cor- 
poration the  assets  and  "good- will" 
of  the  firm.  Complainant  very  soon 
sold  his  interest  in  the  corporation  to 
the  corporation,  retaining  only  one 
share,  and,  within  a  few  months, 
formed  with  his  brother,  a  partner- 
ship under  the  name  "William  Smith 


&  Brother,"  to  carry  on  the  same  busi- 
ness as  the  defendant.  He  then 
sought  to  enjoin  defendant  from 
advertising  its  business  under  the 
name  of  "Brand  &  Smith"  or  as 
"Successors  of  Brand  &  Smith," 
claiming  that  this  tended  to  deceive 
the  pubUc.  Held,  that  the  defendant 
had  not  exceeded  its  rights. 

Merry  v.  Hoopes,  111  N.  Y.  415- 
1888;  18  N.  E.  714  (headnote): 
"Where  upon  the  dissolution  of  a 
firm,  one  of  the  copartners  pur- 
chases and  succeeds  to  the  busi- 
ness, the  exclusive  right  to  use 
trade-marks  belonging  to  the  firm 
passes  to  the  purchaser,  although 
no  express  mention  is  made  of  them 
in  the  deed  of  assignment." 

'"Lepow  V.  Kottler,  115  App.  Div. 
(N.  Y.)  231-1906;  100  N.  Y.  Supp. 
779.  Defendant  Kottler,  who  had 
previously  been  doing  business  un- 
der the  name  of  H.  Kottler  &  Co., 
formed  a  partnership  with  plaintiff 
under  the  firm  name  of  H.  Kottler 


GO 


Good-Will 


would  not  imagine  that  when  the  good-will  and  trade  of  a  retail 
shop  were  sold,  the  vendor  might,  the  next  day,  set  up  a  shop 
within  a  few  doors  and  draw  off  all  the  customers.  The  good-will 
of  such  a  shop,  in  good  faith  and  honest  understanding,  must 
mean  all  the  benefit  of  the  trade  and  not  merely  a  benefit  of 
which  the  vendor  might  the  next  day,  deprive  the  vendee."  "^^ 

§  32.  Dissolution  by  Death  of  a  Partner.  —  The  former  rule 
was  that,  on  the  death  of  a  partner,  the  right  to  use  a  firm  name 
and  the  title  to  it  pass  to  the  surviving  partners.*"'^  This  rule 
was  doubted  in  Crawshay  v.  Collins,'"^  and  is  not  now  regarded  as 
law.  The  name  is  now  held  an  asset  of  the  company  in  which 
the  estate  of  a  deceased  partner  may  participate.^^ 

In  a  purchase  by  a  surviving  partner  of  the  rights  of  his  de- 
ceased partner  from  the  estate  of  that  partner,  the  family  and 
descendants  of  the  deceased  may  lose  the  right  to  use  the  family 
name  in  any  way  detrimental  to  the  rights  of  the  surviving  partner 
under  the  terms  of  the  sale.^^ 

Where,  on  the  death  of  a  partner,  all  assets  are  sold  at  auction, 
a  purchaser  of  the  good-will  obtains  an  unrestricted  right  to  use 


&  Co.  It  was  agreed  that,  upon 
dissolution,  the  party  bidding  highest 
should  acquire  the  share  of  the  other, 
a  reference  to  the  good-will  being 
stricken  out  of  the  draft.  Three  or 
four  years  after,  the  firm  was  dis- 
solved; one  of  the  two  adjoining 
stores  was  taken  by  each  partner,  but 
no  provision  was  made  as  to  the  use 
of  the  firm  name.  Plaintiff  then 
sought  to  restrain  the  defendant  from 
using  the  old  firm  name,  "H.  Kot- 
tler  &  Co."  Held,  that  the  defendant 
was  entitled  to  use  the  name.  It  is 
intimated,  also,  that  plaintiff  was  not 
entitled  to  use  the  sign  "N.  Lepow, 
formerly  H.  Kottler  &  Co.,"  the  word 
"formerly"  being  in  small  letters. 

Stein  V.  National  Life  Assn.,  105 
Ga.  821-1898;  32  S.  E.  615;  46 
L.  R.  A.  150;  Moore  v.  Raivson,  185 
Mass.  264-1904.  Where  a  manufac- 
turer of  shoes,  doing  lousiness  under 
the  name  "D.  G.  Rawson  &  Co."  en- 


tered into  a  partnership  agreement 
with  others  under  which  the  same 
business  was  to  be  carried  on  by  the 
new  firm  at  the  same  place  and  under 
the  same  name,  the  trade  name  passed 
to  the  firm  without  being  specified. 

^^  Harrison  v.  Gardner,  2  Mad. 
198-219-1817.  This  is  the  doctrine 
of  Trego  v.  Hunt,  12  T.  L.  R.  80- 
1895.    See  note  34,  §  59,  infra. 

°*  Lewis  V.  Langdon,  7  Simons  421- 
1835. 

^»  15  Ves.  218-1808. 

"  Wedderhurn  v.  Wedderbum,  22 
Beav.  84-1855;  Smith  v.  Everett,  27 
Beav.  446-1859;  Hall  v.  Barrows,  4 
De  G.  J.  &  S.  150-1863;  Dougherty 
V.  Van  Nostrand,  1  Hoff.  Ch.  (N.  Y.) 
68-1839;  Williams  v.  Wilson,  4  Sandf. 
Ch.  (N.  Y.)  379-1846;  Howe  v.  Sear- 
ing, 6  Bosw.  (N.  Y.)  354-1860;  Holden, 
Admr.,  v.  M'Makin,  1  Pars.  Sel.  Cas. 
(Pa.)  270-1847. 

"//aW  v.  Barrows,  4  De  G.  J.  & 


Dissolution  by  Death  of  a  Partner 


61 


the  firm  name,  because  such  name  is  inseparable  from  the  good- 
will.^^  In  the  case  of  a  purchase  of  the  partnership  business  by 
one  partner,  it  is  held  that  the  exclusive  right  to  the  use  of  the 
firm  name  passes  to  the  purchaser,  although  no  express  mention 
is  made  of  such  name  in  the  agreement  of  dissolution.  The  pur- 
chaser acquires  the  good-will  of  the  firm,  and  this  includes,  as 
against  the  retiring  partners,  the  exclusive  right  to  use  the  name 
under  which  the  firm  did  business.''^ 

Where  the  member  of  the  firm  dies  and  his  will  and  the  partner- 
ship agreement  contemplate  the  continuation  of  the  business 


S.  150-1863.  Partnership  assets  in- 
clude the  good-will  and  the  right  to 
use  the  trade-mark,  and,  on  the  pur- 
chase of  all  the  partnership  assets 
by  a  surviving  partner,  from  the  es- 
tate of  a  deceased  partner  at  a  valu- 
ation, the  value  of  the  good-will  and 
trade-mark  should  be  included. 

''Slater  v.  Slater,  175  N.  Y.  143- 
1903;  67  N.  E.  224;  61  L.  R.  A.  796; 
Hallett  V.  Cumston,  110  Mass.  29- 
1872.  Hallett  and  Cumston  were 
partners  up  to  1865,  when  Hallett 
sold  out  to  Cumston,  giving  him 
right  "to  use  the  name  of  said  Hal- 
lett jointly  with  his  own  name,  in 
conducting  his  said  business,  but 
that  such  use  of  his  name  should 
give  the  plaintiff  no  rights  or  in- 
terest whatever  therein,  other  than 
those  named"  (id.  p.  30).  Hallett 
was  to  continue  three  years  as  a 
salesman  and  to  take  one-third  of 
the  net  profit.  In  1870,  Cumston 
died;  defendant,  the  son  of  Cum- 
ston, was  then  notified,  as  executor 
of  Cumston's  will,  that  plaintiff  ter- 
minated his  agreement  with  Cumston 
and  forbade  the  use  of  his  (plain- 
tiff's) name.  Next  day,  Cumston's 
son  wrote  Hallett  that  he  had  com- 
pleted arrangements  with  another 
man  called  Hallett  to  join  him  in  con- 
tinuing his  father's  business.  Held, 
by  agreement  with  Cumston,  senior. 


Hallett  conveyed  all  interest  in  the 
business  and  cannot  restrain  use  of 
trade-mark  "Hallett  and  Cumston." 
The  agreement  terminated  at  Cum- 
ston's death.  Cumston's  executors 
had  no  right  to  use  Hallett's  name 
without  his  consent.  They  had  right 
to  use  any  other  person's  name.  In- 
junction denied  because  there  was  no 
allegation  that  defendant  used  name 
Hallett  with  intent  to  represent  it  to 
be  the  name  of  the  plaintiff  and 
thereby  defraud  him. 

^4  Merry  v.  Hoopes,  111  N.  Y.  415- 
1888;  18  N.  E.  714;  Menendez  v. 
Holt,  128  U.  S.  514-1888;  32  L.  ed. 
526;  9  Sup.  Ct.  143;  Listman  Mill 
Co.  V.  Wm.  Listman  Milling  Co.,  88 
Wis.  334-1894;  60  N.  W.  261;  Slater 
V.  Slater,  175  N.  Y.  143-1903;  67  N. 
E.  224;  61  L.  R.  A.  796;  A.  G.  Fisk 
V.  Fisk,  Clark  &  Flagg,  77  App.  Div. 
(N.  Y.)  83-1902;  79  N.  Y.  Supp.  37. 

Steinfeld  v.  National  Shirt  Waist 
Co.,  99  App.  Div.  (N.  Y.)  286-1904; 
90  N.  Y.  Supp.  964.  Plaintiffs  were 
successors  to  a  firm  doing  business 
under  the  name  "National  Shirt 
Waist  Co.,"  and  were  doing  business 
under  that  name.  One  Broads  had 
sold  all  his  interest  in  the  earlier 
firm  to  a  party  who,  in  time,  as- 
signed to  plaintiffs;  no  express  men- 
tion being  made,  however,  of  the 
firm  or  trade  name.    Defendant  com- 


62 


Good-Will 


under  the  former  name,  the  firm  name  cannot  be  considered  as 
an  asset  of  the  estate,  subject  to  sale  by  the  executors  of  the 
deceased,  but  is  a  part  of  the  property  of  the  firm  and  often  the 
most  important  part,  and  not  to  be  changed  or  disposed  of  ex- 
cept as  firm  propertyJ^ 

§  33.  Transfers  by  Descent  and  Rights  of  Descendants. — 
The  good-will  and  trade  names  of  a  business  which  pass  from 
its  owner  to  some  of  his  descendants,  by  devolution  of  law,  will 
be  protected  in  the  hands  of  the  descendants  if  they  continue  the 
business.    They  may  use  the  ancestor's  name  as  a  trade  name, 


pany  was  then  organized  under  the 
same  name  as  that  used  in  trade  by 
plaintiffs.  Broads  had  two,  and  his 
brother  ninety-seven  of  the  hundred 
shares  of  the  company.  It  was  al- 
leged that  defendant  had  taken  the 
name  for  the  purpose  of  misleading 
the  pubUc,  that  confusion  had  in  fact 
resulted,  with  injury  to  plaintiff's 
business.  Held,  that  a  preliminary 
injunction  should  be  granted.  Where, 
upon  the  dissolution  of  a  firm,  one 
partner  purchases  the  business,  he  is 
exclusively  entitled  to  the  firm  name, 
even  though  not  dishonest  in  the 
agreement. 

''^  Sohier  v.  Johnson,  111  Mass. 
238-1872.  Defendant  was  a  member 
of  the  firm  of  E.  A.  &  W.  Winchester 
at  the  time  of  the  death  of  the  senior 
member,  William  F.  Winchester.  It 
was  held,  in  view  of  the  provision  of 
the  articles  of  partnership  and  of  the 
will  of  William  P.  Winchester,  which 
contemplated  the  continuance  of  a 
firm  under  the  old  name,  that  the  firm 
name  and  good-will  of  the  business 
could  not  be  considered  an  asset  of  the 
estate,  subject  to  sale  by  the  executors 
and  trustees,  especially  after  defend- 
ant in  partnership  with  others,  had  for 
many  years  carried  on  the  business 
under  the  old  firm  name. 

Slater  v.  Slater,  175  N.  Y.  143-1903; 
67X.  E.224;  61  L.  R.  A.  796.    A  firm 


name  is  inseparable  from  the  good-will, 
and  the  unrestricted  right  to  use  it 
passes  to  one  who,  by  the  dissolution 
of  the  firm,  (as  by  the  death  of  one 
of  the  partners,)  purchases  the  assets 
of  the  firm,  including  the  good- will, 
whether  such  purchaser  be  a  surviv- 
ing partner  or  a  stranger.  In  this 
case,  in  an  action  for  an  accounting 
between  the  executor  of  the  deceased 
partner  of  J.  &  J.  Slater  against  the 
surviving  partner,  the  entire  assets 
of  the  firm  had  been  directed  to  be 
sold  at  auction.  The  question  thus 
arose  as  to  what  right  to  the  firm 
name  a  purchaser  (other  than  the 
surviving  partner)  would  acquire. 
Fisk  v.  Fisk,  Clark  &  Flagg,  77  App. 
Div.  (N.  Y.)  83-1902;  79  N.  Y. 
Supp.  37  (1st  Dept.).  Plaintiffs  were 
administrators  of  the  last  surviving 
member  of  the  firm  of  Fisk,  Clark 
&  Flagg.  Held,  that  they  were  en- 
titled to  an  injunction  against  the 
carrying  on  of  a  business  similar  to 
that  firm's  by  defendants  under  a 
corporate  name  the  same  as  that  of 
the  firm,  since  the  good-will  of  the 
business  (though  not  the  name  itself) 
could  be  disposed  of  by  the  repre- 
sentatives of  the  last  surviving  mem- 
ber, and  the  purchaser  of  the  good- 
will would  be  entitled  to  hold  himself 
out  as  tlie  successor  to  the  business  of 
the  extinct  firm. 


Transfers  by  Descent  and  Rights  of  Descendants    63 

because  in  so  doing  they  will  be  regarded  merely  as  carrying  on 
the  business  carried  on  by  him.  The  point  to  be  considered  is 
whether  their  use  of  the  name  can  be  reasonably  regarded  as 
indicating  anything  except  that  they  are  carrying  on  the  business 
of  the  ancestor,  or  that  the  goods  marked  with  the  name  are 
made  at  the  old  factory/^ 

As  between  one  who  bears  a  name  as  his  family  name,  and  one 
who  has  bought  a  right  to  use  this  family  name  as  a  part  of  the 
good-will  of  a  business,  if  the  former  person  competes  with  the 
latter  he  must  accompany  his  use  of  his  name  with  such  explana- 
tions as  will  prevent  fraud,  and  the  explanations  ''must  accom- 


''^  Leather  Cloth  Co.  v.  American 
Leather  Cloth  Co.,  4  De  G.  J.  &  S. 
137-1863;  affd.,  11  H.  L.  Gas.  523- 
1865.  Emerson  v.  Badger,  101  Mass. 
82-&-1S69.  Judge  Gray:  "The  orig- 
inal inventor  of  the  razor  straps 
mentioned  in  the  bill,  and  the  owner 
and  designer  of  the  label  put  upon 
them  by  way  of  trade-mark,  was 
Charles  Emerson,  Sr.,  who  employed 
and  instructed  in  his  business  five  of 
his  nephews,  of  whom  Benjamin 
Badger,  the  father  of  this  defendant, 
was  the  eldest,  and  the  plaintiff  was 
the  third.  Said  Benjamin,  in  his 
uncle's  lifetime,  left  his  employment, 
and  continued,  with  his  consent  and 
permission,  but  on  his  own  account, 
to  manufacture  and  sell  such  straps 
and  to  use  the  same  label  thereon, 
and  was  succeeded  in  his  business  by 
his  son,  the  defendant.  The  uncle 
died  without  issue,  his  nephews  were 
among  his  heirs  at  law,  and  his  busi- 
ness and  trade-mark  were  not  dis- 
posed of  by  himself  by  will  or  other- 
wise, nor  by  his  administrator  after 
his  decease.  The  plaintiff,  though 
bearing  the  same  name,  is  not  the 
original  Charles  Emerson,  and  has  no 
greater  right  than  the  defendant  to 
hold  himself  out  as  such,  or  to  use 
the  label  of  his  uncle.    The  label  used 


by  the  defendant  does  not  represent 
his  razor  straps  to  be  made  by  the 
plaintiff  or  by  any  person  of  the 
name  of  Charles  Emerson,  but  states 
with  exact  truth  the  relation  of  the 
defendant  to  the  original  inventor 
and  owner.  The  plaintiff,  therefore, 
fails  to  prove  either  any  infringement 
of  his  own  rights  or  any  wrongful 
act  of  the  defendant." 

England  v.  Downs,  6  Beav.  269-76- 
1842.  A  widow  carried  on  the  business 
of  victualler  on  premises  leased  from 
year  to  year.  Before  marrying  again 
she  assigned  all  her  household  goods, 
stock  in  trade,  brewing  utensils,  and 
all  her  effects  —  thus  excluding  her 
husband  —  and  then  married.  "Good 
will  in  a  case  of  this  sort,"  Lord 
Langdale  said,  "is  the  chance  or  prob- 
ability that  custom  will  be  had  at  a 
certain  place  of  business  in  conse- 
quence of  the  way  in  which  that 
business  has  been  previously  carried 
on.  *  *  *  I  must  own  my  opinion 
is,  that  the  good-will  belonged  to  the 
wife,  and  was  a  part  of  the  settled 
property,  as  annexed  and  incident 
to  the  things  which  were  comprised 
in  the  deed,  and  that  whether  the 
particular  interest  she  had  in  the 
leasehold  premises  was  distinctly  com- 
prised in  the  deed  or  not," 


64 


Good-Will 


pany  the  use,  so  as  to  give  the  antidote  with  the  bane."  "  Chil- 
dren of  a  decedent  may  form  a  corporation  and  use  his  name  in  the 
corporate  name,  and  be  protected  in  so  doing  against  former  em- 
ployees of  decedent  and  others  who  attempt  to  use  his  name  in  a 
similar  business.'^ 

§  34.  Transfer  of  Secret  Formulae.  —  As  to  the  law  relating 
to  transfers  of  secret  formula)  and  processes,  see  the  chapters 
on  "Trade  Secrets"  and  ''Interference  with  Contract." 

One  who  owns  such  a  secret  may  transfer  it  under  contract 
providing  that  it  be  kept  a  secret  by  the  person  buying  it,  and 
may  enjoin  a  breach  of  such  contract.  He  may  sell  the  same 
secret  to  various  persons,  allowing  to  each  the  right  to  sell  the 
article  generally  or  in  a  prescribed  territory.''^  See  chapter  on 
''Trade  Secrets." 

§  35.  Good-Will,  Valuation  of.  —  The  question  as  to  the 
method  of  valuing  good-will  is  one  which  has  been  unsettled  in 

"  Herring-Hall-Marvin  Safe  Co.  v.      having  a  recipe  for  a  liniment,  appar- 


HalVs  Safe  Co.,  208  U.  S.  554-59- 
1908. 

"(S.  Howes  Co.  V.  Howes  Grain 
Cleaner  Co.,  24  Misc.  (N.  Y.)  83- 
1898;  52  N.  Y.  Supp.  468.  Upon 
the  death  of  Simeon  Howes,  well 
known  as  a  manufacturer  of  grain 
cleaners  and  similar  machinery,  his 
children  and  legatees  formed  a  corpo- 
ration under  the  name  of  the  "S. 
Howes  Company"  to  continue  de- 
cedent's business;  this  corporation 
acquired  from  the  executors  the  as- 
sets, trade-marks  and  good-will  of  de- 
cedent's business,  without  any  ex- 
press mention  of  the  right  to  use  the 
name.  Former  employees  of  the  de- 
cedent then  organized  "The  Howes 
Grain  Cleaner  Company"  to  engage 
in  the  same  business.  Confusion  and 
mistakes  on  the  part  of  customers 
were  shown  to  have  resulted.  Held, 
that  defendant  should  be  enjoined 
from  using  a  corporate  name  of 
which  "Howes"  was  a  part. 

Marshall  v.  Pinkham,  52  Wis.  572- 
1881 ;  9  N.  W.  615.     Samuel  Marshall, 


ently  not  originated  by  him  or  pat- 
ented, allowed  various  members  of  his 
family  to  make  and  sell  it,  a  label  being 
attached  containing  the  words  "Old 
Dr.  S.  Marshall's  Celebrated  Lini- 
ment" and  other  words,  and  the 
figure  of  a  horse's  head.  After  his 
death  his  widow  continued  for  a 
time  to  make  and  sell  the  liniment,  and 
then  sold  all  her  material  to  the  plain- 
tiff, one  of  Samuel  Marshall's  sons. 
Held,  that  plaintiff  had  no  exclusive 
right  to  make  and  sell  the  liniment,  or 
use  the  old  label  and  the  trade  name, 
but  that  the  other  children  had 
similar  rights. 

'» Park  &  Co.  v.  Hartman,  187  Mass. 
144-1905;  72  N.  E.  839;  153  Fed.  24; 
Fowl  v.  Park,  131  U.  S.  88-1889;  9  S. 
Ct.  658;  33  L.  ed.  67.  In  Chadwick  v. 
Covell,  151  Mass.  190-1890;  23  N.  E. 
1068;  6  L.  R.  A.  839;  the  adminis- 
tratrix of  Dr.  Spencer,  who  had  made 
certain  medicines  according  to  secret 
formula?  and  under  distinctive  names, 
made  what  is  assumed  to  have  been  a 
vahd  transfer  to  the  plaintiff  of  the 


Good-Will,  Valuation  of 


65 


this  country  for  many  years.  Gradually,  however,  a  rule  has  taken 
form  that  value  of  good-will  may  be  ascertained  by  multiplying 
the  annual  net  profits  of  the  business  with  which  the  good-will 
is  connected  by  a  number  of  years,  increasing  in  accordance  with 
the  length  of  time  in  which  the  name  has  been  used,  and  the  char- 
acter and  prominence  of  the  reputation  attaching  to  it.  ''Most  of 
the  American  cases  adopted  a  period  running  from  two  to  six  years, 
the  number  being  dependent  upon  the  nature  of  the  business,  the 
length  of  time  during  which  it  has  been  established  at  a  particular 
place,  and  the  extent  to  which  it  is  known  to  the  public. ^° 

Six  years  have  been  considered  a  proper  multiple  as  to  good-will 
in  a  chain  of  candy  stores.^^ 

Ten  years  have  been  considered  to  be  a  proper  multiple  to 
estabhsh  the  good-will  of  Tiffany  &  Co.,  New  York  City .82 


formulae  for  these  medicines  with  the 
trade-marks  and  labels.  Afterward 
an  administrator  de  bonis  non  assumed 
to  convey  to  defendant  the  recipes  and 
trade-marks  for  these  medicines,  ex- 
cept such  as  might  have  been  already 
granted.  Defendant  then  made  and 
sold  the  medicines,  with  labels  simi- 
lar to  those  used  by  Dr.  Spencer. 
Held,  that  he  was  entitled  to  do  so; 
that  both  plaintiff  and  defendant 
could  use  the  formulae,  as  well  as  the 
trade  names,  which  were  not  identi- 
fied with  any  particular  place  of 
manufacture,  so  that  defendant's  use 
of  them  did  not  tend  to  deceive  the 
public  any  more  than  plaintiff's. 

80  Matter  of  Moore,  97  Misc.  (N.  Y.) 
240;  von  Auv.  Magenheimer,  126  App. 
Div.  (N.  Y.)  257. 

"It  was  a  question  of  fact  in  view  of 
the  surrounding  circumstances,  how 


many  years  purchase  of  the  average 
annual  profits  should  be  taken  as  the 
value  of  the  good- will." 

A  two  years'  purchase  was  adopted 
in  the  Matter  of  Rosenberg,  N.  Y.  Law 
Journal,  May  9,  1908;  in  Matter  of 
Gumbinner,  92  Misc.  (N.  Y.)  104;  in 
Matter  of  Silkman,  121  App.  Div. 
(N.  Y.)  202. 

A  three  years'  purchase  was  adopted 
in  Matter  of  Keahon,  60  Misc.  (N.  Y.) 
508;  in  Matter  of  Welsh,  Mills  Reports, 
Volume  9,  page  411,  and  in  Matter  of 
Ball,  161  App.  Div.  (N.  Y.)  79. 

A  ten  years'  purchase  was  adopted 
in  Matter  of  Weatherbee,  New  York 
Law  Journal,  November  5,  1913,  and 
Matter  of  Moore,  79  Misc.  (N.  Y.)  240. 

^1  Von  Au  V.  Magenheimer,  126 
App.  Div.  (N.  Y.)  257. 

32  Matter  of  Moore,  97  Misc.  (N.  Y.) 
240. 


CHAPTER  IV 

Secondary  Meaning 

Section  36.  General  discussion. 

37.  Statements  of  the  general  rule. 

38.  Geographic  limits  in  which  secondary  meaning  is  protected. 

39.  Secondary  meaning  of  trade  phrases. 

40.  Names  of  places. 

41.  Existence  of  secondary  meaning  is  a  question  of  fact. 

42.  Association  of  names  with  goods  the  identity  of  the  maker  of 

which  is  unknown. 

43.  Ten-year  trade-mark  law. 

§  36.  General  Discussion.  —  All  words  of  the  language  are 
public  property.  Like  highways,  they  are  part  of  the  public 
domain.  In  fact,  they  are  public  property  to  a  greater  extent 
than  anything  else  unless  it  be  air  and  sunlight.  Nevertheless, 
many  words  are  protected  as  trade-marks,  which  is  equivalent  to 
saying  that  they  may  be  used  in  some  particular  sense  by  only 
one  person.  The  fact  that  the  goods  of  one  manufacturer  are 
known  by  a  name  which  is  in  constant  use  by  the  pubHc  does  not 
necessarily  permit  a  rival  to  use  the  name  on  competing  goods. 
The  control  of  equity  over  words  and  marks  used  in  trade  is  not  de- 
fined or  limited  by  the  nature  of  the  word  or  mark,  but  by  the  use 
which  the  public  makes  of  it.  The  status  of  all  industrial  names 
is  largely  in  the  hands  of  the  public  which  creates  words  and  mean- 
ings for  words  at  will.  The  great  European  war  has  created  many 
new  words,  modified  the  meaning  of  others  and  added  new  mean- 
ings to  many  others.  A  similar  process  is  going  on  constantly  in 
trade;  and  the  paramount  consideration  of  the  court  in  every 
case  involving  a  name  is  the  use  to  which  the  public  puts  the  word, 
not  generally  speaking,  but  in  connection  with  the  goods  or  busi- 
ness house  it  is  used  to  describe. 

With  the  general  and  usual  meaning  of  words  and  names  or 
with  the  general  and  usual  uses  of  marks  and  devices,  as  distin- 
guished from  their  trade  meaning  and  use,  the  law  of  unfair  com- 
petition does  not  deal.  The  rights  of  the  one  using  these  names 
66 


Statements  of  the  General  Rule  67 

and  marks  in  trade  are  confined  to  this  trade  meaning.  The 
existence  of  a  trade  meaning  presupposes  that  the  pubhc  has  no 
need  to  use  the  name  in  describing  or  referring  to  the  article  to 
which  it  is  appHed  in  trade.  The  pubhc  has  need  of  the  word 
''Ivory "  to  describe  elephants'  tusks.  It  has  no  need  for  the  word 
to  describe  soap. 

Whenever  a  word  which  is  in  general  use  is  used  also  in  a  trade 
sense,  all  trade  rights  in  the  word  rest  on  the  doctrine  of  Secondary 
Meaning.  The  legal  questions  involved  are  simple,  however, 
where  the  word  is  used  in  an  entirely  non-descriptive  sense,  as, 
for  instance,  the  case  of  the  word  ''Fairy"  in  the  name  "Fairy 
Soap."  Where,  however,  the  word  used  may  be  construed  as 
descriptive,  even  when  placed  on  the  goods  it  identifies,  the  legal 
questions  involved  may  be  most  complex,  as  for  instance  the 
name  "Oneida  Traps"  —  a  phrase  which  might  be  construed  to 
mean  traps  made  at  Oneida,  had  not  the  public  come  to  associate 
this  term  with  the  goods  of  one  particular  concern.  It  is  in  this 
association  in  the  public  consciousness  that  the  property  right 
in  trade  names  is  found. 

This  doctrine  is  a  distinctly  modern  development.  It  is  in 
direct  contravention  of  the  theory  so  long  held,  that  words  in 
constant  public  use  may  not  be  protected  and  segregated  for 
trad€  use. 

The  secondary  meaning  rules  are  a  legal  recognition  of  the 
value  of  business  reputation  and  standing.  For  a  competitor  of 
the  makers  of  "Camel  Hair  Belting"  to  sell  poor  quahty  belting 
as  "Camel  Hair  Belting"  may  injure  the  business  of  the  makers 
of  this  brand  just  as  much  as  statements  reflecting  upon  the  ability 
of  its  makers  to  produce  good  belting  or  upon  their  personal 
integrity. 

§  37.  Statements  of  the  General  Rule.  —  Secondary  meaning 
is  association,  nothing  more.  It  exists  only  in  the  minds  of  those 
of  the  public  who  have  seen  or  known  a  brand  of  goods  by  some 
name  or  sign  and  have  associated  the  two  in  their  minds. 

"The  name  of  a  person  or  a  town  may  have  become  so  associated 
with  a  particular  product  that  the  mere  attaching  of  that  name  to  a 
similar  product  without  more  would  have  all  the  effect  of  a  false- 
hood" ^  (italics  author) 

"When  the  word  is  incapable  of  becoming  a  valid  trade-mark, 
1  Herring-Hall  Co.  v.  Hall's  Safe  Co.,  208  U.  S.  554. 


68  Secondary  Meaning 

because  descriptive  or  geographical,  yet  has  come  by  long  use  to 
stand  for  a  particular  maker  or  vendor,  its  use  by  anotlier  in  this 
secondary  sense  will  be  restrained  as  unfair  and  fraudulent  com- 
petition, and  its  use  in  its  primary  or  common  sense  confined  in 
such  a  way  as  will  prevent  a  probable  deceit  by  enabUng  one 
maker  or  vendor  to  sell  his  article  as  the  product  of  another."  ^ 

''Geographic  names  often  acquire  a  secondary  signification 
indicative  not  only  of  the  place  of  manufacture  but  of  the  name 
of  the  manufacturer  or  producer,  and  the  excellence  of  the  thing 
manufactured  or  produced,  which  enables  the  manufacturer  or 
owner  to  assert  an  exclusive  right  to  such  name  as  against  every 
one  not  doing  business  within  the  same  geographical  limits;  and 
even  as  against  them,  if  the  name  be  used  fraudulently  for  the 
purpose  of  misleading  buyers  as  to  the  actual  origin  of  the  thing 
produced  or  pahning  off  the  productions  of  one  person  as  those  of 
another."  ^ 

''Where  an  alleged  trade-mark  is  not  in  itself  a  good  trade- 
mark, yet  the  use  of  the  word  has  come  to  denote  the  particular 
manufacturer  or  vendor,  relief  against  unfair  competition  or 
perfidious  dealmg  will  be  awarded  by  requiring  the  use  of  the 
word  by  another  to  be  confined  to  its  primary  sense  by  such 
limitations  as  will  prevent  misapprehension  on  the  question  of 
origin."  ^ 

"The  first  appropriator  of  a  name  or  device  pointing  to  his 
ownership  or  which,  by  being  associated  with  articles  of  trade,  has 
acquired  an  understood  reference  to  the  originator  or  manufac- 
turer of  the  articles,  is  injured  whenever  another  adopts  the  same 
name  or  device  for  sunilar  articles,  because  such  adoption  is  in 
effect  representing  falsely  that  the  productions  of  the  latter  are 
those  of  the  former."  ^ 

"Primarily,  it  would  seem  that  one  might  appropriate  to  him- 
self for  his  goods  any  word  or  phrase  that  he  chose;  but  this  is 
not  so,  because  the  broader  public  right  prevails,  and  one  may 
not  appropriate  to  his  own  exclusive  use  a  word  which  already 
belongs  to  the  pubUc  and  so  may  be  used  by  any  one  of  the  pubHc. 

2  Computing  Scale  Co.  v.  Standard  ^  Elgin  Watch  Co.  v.  III.  Watch  Co., 

Computing  Scale  Co.,  118  Fed.  965;  55  179  U.  S.  665. 

C.  C.  A.  459.  ^  Lawrence  Mfg.   Co.   v.    Tennessee 

'  Siegert  v.  Gandolfi,  149  Fed.  100-  Mfg.  Co.,  138  U.  S.  546. 
1906;  79  C.  C.  A.  145. 


Statements  of  the  General  Rule  69 

Hence  comes  the  rule,  first  formulated  in  trade-mark  cases,  that 
there  can  be  no  exclusive  appropriation  of  geographical  words 
or  words  of  quality.  This  is  because  such  words  are,  or  may  be, 
aptly  descriptive,  and  one  may  properly  use  for  his  own  product 
any  descriptive  words,  because  such  words  are  of  public  or  com- 
mon right.  It  soon  developed  that  this  latter  rule,  literally  ap- 
plied in  all  cases,  would  encourage  commercial  fraud,  and  that 
such  universal  application  could  not  be  tolerated  by  courts  of 
equity;  hence  came  the  ''secondary  meaning"  theory.  There  is 
nothing  abstruse  or  complicated  about  this  theory,  however 
difficult  its  application  may  sometimes  be.  It  contemplates 
that  a  word  or  phrase  originally,  and  in  that  sense  primarily, 
incapable  of  exclusive  appropriation  with  reference  to  an  article 
on  the  market,  because  geographically  or  otherwise  descriptive, 
might  nevertheless  have  been  used  so  long  and  so  exclusively 
by  one  producer  with  reference  to  his  article  that,  in  that  trade 
and  to  that  branch  of  the  purchasing  public,  the  word  or  phrase 
had  come  to  mean  that  the  article  was  his  product;  in  other 
words,  had  come  to  be,  to  them,  his  trade-mark.  So  it  was  said 
that  the  word  had  come  to  have  a  secondary  meaning,  although 
this  phrase,  "secondary  meaning,"  seems  not  happily  chosen, 
because,  in  the  limited  field,  this  new  meaning  is  primary  rather 
than  secondary;  that  is  to  say,  it  is,  in  that  field,  the  natural 
meaning.  Here,  then,  is  presented  a  conflict  of  right.  The  al- 
leged trespassing  defendant  has  the  right  to  use  the  word,  be- 
cause in  its  primary  sense  or  original  sense  the  word  is  descriptive; 
but,  owing  to  the  fact  that  the  word  has  come  to  mean,  to  a  part 
of  the  public,  something  else,  it  follows  that  when  the  defendant 
approaches  that  same  part  of  the  public  with  the  bare  word,  and 
with  nothing  else,  applied  to  his  goods,  he  deceives  that  part 
of  the  public,  and  hence  he  is  required  to  accompany  his  use  of 
the  bare  word  with  sufficient  distinguishing  marks  normally  to 
prevent  the  otherwise  normally  resulting  fraud."  "     Denison,  J. 

Statements  like  the  above  might  be  multiplied  but  it  would 
be  mere  reiteration,  for  the  principle  is  very  simple  indeed. 

The  questions  involved  in  these  cases  are:  first,  as  to  whether 
or  not  the  name  used  by  the  plaintiff  is  used  by  him  and  under- 
stood by  the  public  to  be  used  by  hun,  in  its  general  or  common 
meaning,  or  in  a  trade  sense,  as  identifying  him  or  his  goods: 
« Merriam  v.  Saalfield,  198  Fed.  369,  at  p.  373. 


70  Secondary  Meaning 

second,  whether  (if  the  public  gives  to  the  name  when  used 
by  the  plaintiff  a  trade  meaning)  the  defendant  has  so  used 
it  as  to  prevail  on  purchasers  to  buy  defendant's  goods,  believing 
that  they  were  getting  the  goods  made  by  the  plaintiff.  Of  course 
if  the  defendant  used  direct  misrepresentation,  the  plaintiff's 
remedy  is  plain.  But  when  the  proof  shows  that  the  defendant 
is  using  a  term  which  is  in  general  use  as  a  part  of  the  language, 
or  partially  describes  the  goods  in  question,  it  must  be  a 
precedent  condition  to  plaintiff's  success,  that  he  prove  that 
the  term  in  question  as  used  by  the  defendant  no  longer  has 
its  evident,  usual  meaning,  but  has  come  to  possess  a  second- 
ary and  further  meaning,  viz.:  that  the  goods  to  which  it  refers, 
are  goods  made  only  by  the  plaintiff.  Unless  this  be  proven  the 
defendants  are  not  in  the  wrong,  for  they  are  merely  using  a 
name  to  which  they  have  as  much  right  as  has  the  plaintiff,  and 
there  is  no  room  for  a  charge  of  fraud  or  unfairness.'^ 

The  doctrine  of  secondary  meaning  is  clearly  illustrated  by 
Reddaway  v.  Banham,^  a  House  of  Lords  case.  This  case  involves 
the  name  "Camel  Hair  Belting."  This  name  the  plaintiffs  ap- 
plied to  a  belting  made  largely  of  camel's  hair,  although  it  was 
not  at  first  generally  known  that  such  was  the  fact.  At  the  first, 
this  "camel's  hair"  was  supposed  to  be  a  conmiercial  hair  stock 
which  was  a  mixture  of  the  hair  of  sheep,  goats,  and  various 
eastern  animals  in  which  hair  of  camels  might  be  found;  but 
which  no  one  supposed  was  all  camel's  hair.  Formerly  the  yarn 
of  which  the  belting  was  made  was  sold  simply  as  "brown 
worsted."  Competitors  of  Reddaway  made  belting,  which  they 
called  by  names  of  animals  such  as  yah,  buffalo,  llama,  crocodile, 
etc.  On  the  trial  a  letter  was  put  in  evidence  in  which  a  salesman 
wrote:  "I  think  I  can  take  this  order  from  ' Reddaway 's'  if  the 
goods  are  marked  'Camel  Hair  Belting.'"  There  was  ample 
evidence  to  show,  says  the  court,  that  purchasers  did  not  apply 
this  name  to  all  goods  made  of  camel  hair  but  to  Reddaway's 
goods  only.  Lord  Herschell  said  in  the  House  of  Lords:  "The 
name  of  a  person,  or  words  forming  a  part  of  the  common  stock  of 
language,  may  become  so  far  associated  with  the  goods  of  a  partic- 
ular maker  that  it  is  capable  of  proof  that  the  use  of  them  by 
themselves,   without   explanation  or  qualification,   by  another 

'  Cellular  Clothing  Co.,  Ltd.,  v.  Max-         «  App.  Cas.  199-1896. 
ton  &  Murray,  App.  Cas.  326-1899. 


Statements  of  the  General  Rule 


71 


manufacturer  would  deceive  a  purchaser  into  the  behef  that  he 
was  getting  the  goods  of  A.  when  he  was  really  getting  the  goods 
of  B."  (id.  p.  210.) 

Another  illustration  of  the  application  of  this  doctrine  is  found 
in  the  "Silverpatti"  case,  mentioned  in  the  note  below. ^ 


^Faulder  &  Co.,  Ltd.,  v.  0.  &  G. 
Rushton,  Ltd.,  20  R.  P.  C.  477-1902. 
Plaintiffs  made  jam  at  Stockport, 
Chester.  Defendants  were  grocers, 
twenty-three  miles  away.  In  1886, 
plaintiffs  began  to  boil  their  jam  in 
silvered  or  silver-lined  jars,  a'nd  be- 
gan to  call  their  product  "Silver- 
pan"  and  sell  it  under  that  name. 
Defendants  issued  a  circular  contain- 
ing these  words:  "A  2  lb.  Jar  Sil- 
verwell  —  Silver  Pan  Strawberry  10 
H  d.  O.  &  G.  Rushton,  Ltd."  Plain- 
tiffs claimed  secondary  meaning  for 
word  "Silverpan."  They  had  used 
it  since  1887;  had  spent  £12,000 
in  advertising.  Nine  thousand  copies 
of  "The  Mail"  circulated  in  the  dis- 
trict where  defendants  carried  on 
business,  and  plaintiffs  often  adver- 
tised "Silverpan"  jams  in  that  pa- 
per and  two  others  in  the  neighbor- 
hood, and  1,000,000  circulars  were 
said  to  have  been  used.  Letters  were 
addressed  to  plaintiff  at  "Silverpan 
Works,"  "The  Silverpan  Company," 
by  customers  when  ordering  goods, 
and  "Silverpan"  jam.  HeW:  "If 
a  man  is  accustomed  to  buy  a  certain 
brand  which  has  become  a  catch- 
word, very  often  he  forgets  the  name 
of  the  maker.  He  might  remember 
jam  that  he  bought,  which  was  un- 
doubtedly Faulder  &  Co.'s  jam,  and, 
wishing  to  get  the  same  jam  again, 
in  asking  for  'Silverpan'  he  would 
buy  it  in  the  expectation  of  getting 
the  same  brand,  that  is,  Faulder's 
brand;  therefore  I  am  not  at  all  sure 
it   was  absolutely   necessary  that   a 


person  asking  for  'Silverpan'  should 
have  in  mind  also  the  name  of  Faul- 
der" (id.  p.  485).  HeU,  "Silverpan" 
had  acquired  a  secondary  meaning 
and  meant  Faulder's  jam.  Defend- 
ants' circular  broke  the  word  into 
two  —  "silver"  and  "pan."  Held, 
that  the  substance  was  "Silverpan," 
and  this  would  not  excuse  their  use 
of  the  word.  Defendants  put  the 
word  in  inverted  commas,  as  they 
claimed,  to  attract  attention.  Held,  it 
meant  quotation.  The  plaintiffs  are 
not  bound  to  prove  that  when  the 
defendant  put  those  words  (Silver 
Pan)  in  he  intended  to  deceive. 
"It  is  enough  that  he  put  them 
there.  *  *  *  Whether  it  was  in- 
tentional or  whether  it  surged  up  in 
his  mind  as  a  kind  of  unconscious 
cerebration,  he  got  the  idea  ulti- 
mately from  Faulders"  (id.  p.  489). 
Injunction  granted.  Decision  upheld 
on  appeal,  where  Vaughan-Williams 
stated  that  it  was  necessary  (1)  to 
show  proof  of  identification  of  word 
"Silverpan"  with  plaintiff's  firm,  and 
(2)  this  identification  is  recognized 
in  district  where  defendant  is  located, 
but  not  by  everyone  in  the  district 
(p.  492),  and  Romer,  L.  J.,  said: 
"Of  course  I  do  not  mean  that  in 
every  town  in  which  there  was  a 
market  for  jams  you  could  find  a 
majority  of  the  inhabitants  who  knew 
about  this  jam:  still  less  do  I  suppose 
that  a  majority  of  the  inhabitants  of 
the  districts  in  which  this  jam  was 
chiefly  sold,  as  a  whole  knew  the  jam 
intimately,  or  possibly  at  all;  but  I 


72 


Secondary  Meaning 


§  38.  Geographic  Limits  in  which  Secondary  Meaning  is 
Protected.  —  A  name  need  not  acquire  this  secondary  meaning 
everywhere,  in  order  to  be  entitled  to  protection  by  the  court ;  but 


think  that  in  the  markets  I  have  re- 
ferred to,  a  substantial  number  of 
persons  who  were  interested  in  the 
question,  and  whom,  from  their  posi- 
tion, one  woukl  expect  to  have  known 
about  the  jam,  did  so  know  the  plain- 
tiff's jam;  and  I  certainly  think  upon 
the  evidence  that  all  who  knew  the 
phrase  at  all,  as  applied  to  jam  before 
the  acts  of  the  defendants  which  are 
complained  of,  identified  the  term  as 
meaning  the  plaintiff's  goods"  (id. 
pp.  439-94). 

Fels  V.  Christopher  Thomas  &  Bros., 
21  R.  P.  C.  85-1903  (Court  of  App.). 
Plaintiffs  were  Americans  who  made 
"  Fels-Naphtha  Soap,"  which  con- 
tained naphtha.  They  introduced  it 
into  England  in  1900.  It  appears  that, 
after  this,  customers  and  dealers  began 
to  use  term  "Naphtha  Soap"  when 
plaintiffs'  was  the  only  naphtha  soap 
on  the  market.  In  1902,  defendant 
began  to  make  "Naphtha  Soap." 
Although  in  the  two  years  while 
plaintiffs'  soap  was  the  only  naphtha 
soap  on  the  market,  buyers  asking  for 
"Naphtha  Soap"  undoubtedly  meant 
plaintiffs'  soap,  there  was,  neverthe- 
less, no  evidence  of  any  secondary 
meaning  which  the  word  naphtha  had 
acquired  in  this  two  j^ears  as  applied 
to  plaintiffs'  soap. 

Ripley  v.  Griffiths,  19  R.  P.  C.  591- 
1902.  Plaintiff  made  blue  in  oval 
cakes  which  he  called  "Oval  Blue." 
The  question  at  issue  was  whether  or 
not  the  words  "Oval  Blue"  meant 
plaintiff's  blue  and  nothing  else.  Both 
plaintiff  and  defendant  sold  blue  in 
oval  form.  Plaintiff  began  to  sell  blue 
in  ovals  twenty-five  years  before  this 
suit  was  brought,  and  for  about  eight- 


een years  no  one  else  sold  oval  blue. 
Testimony  showed  that  people  usually 
ask  for  blue  according  to  the  shape, 
and  the  blues  are  called  by  names  de- 
noting shape.  Defendant  called  his 
goods  "Bobby  Blue."  It  was  in  oval 
shape.  Dealers  testified:  "There  is 
only  one  oval  blue,  that  is  Ripley's." 
Customers  would  ask  for  'Oval'  to 
distinguish  it  from  '  Rickett's  Square.' 
If  they  asked  for  'Oval'  I  gave  them 
Ripley's."  "  I  have  never  heard  of  any 
other  oval  blue  than  Ripley's,"  etc. 
Referring  to  the  rule  laid  down  by 
Judge  Davey  in  Reddnway  v.  Banham, 
App.  Cas.  199-1896  (see  discussion  of 
this  case,  §  82),  court  denies  injunction 
on  ground  that  most  of  witnesses 
either  were  dealers  who  kept  only 
plaintiff's  blue,  or  were  persons  who 
had  never  used  other  kinds.  In  other 
words,  that  identity  between  name  and 
plaintiff's  goods  was  not  established. 

Hansen  v.  Siegel-Cooper  Co.,  106 
Fed.  691-1900  (C.  C.  S.  D.  N.  Y.). 
Complainant  made  and  sold  a  prepara- 
tion of  rennet  under  the  name  "Junket 
Tablets."  The  word  "Junket"  is  the 
recognized  English  name  for  a  species 
of  food,  and  complainant's  tablets 
were  used  in  making  it.  It  was  held 
that  "Junket  Tablets"  had,  however, 
acquired  a  secondary  meaning  as  ap- 
plied to  complainant's  tablets,  and 
defendant,  a  later  manufacturer,  was 
enjoined  from  using  the  name  "Jun- 
ket Capsules"  as  applied  to  a  prepara- 
tion similar  to  complainant's  but  put 
up  in  capsules,  although  he  was  al- 
lowed to  indicate  that  his  preparation 
was  used  in  making  junket. 

The  following  cases  furnish  fa- 
miliar examples:  Holloway  v.  HoUo- 


Geographic  Limits  73 

protection  will  be  given  in  any  territory  in  which  the  name  is 
used  and  understood  in  its  secondary  sense.  Nor  is  it  necessary 
that  a  majority  of  the  people  in  that  locality  must  know  or  use 
the  name  in  this  secondary  way.  This  is  held  in  Faulder  v.  Rush- 
ton,  supra.  Nor  will  the  right  to  an  injunction  be  affected  by 
either  the  period  of  time  the  defendant  has  used  the  offending 
name,  or  the  fact  that  the  plaintiff  has  not  yet  extended  its  busi- 
ess  to  the  territory  which  the  defendant  occupies.  ^° 

Many  names  never  obtain  national  repute;  they  are  known 
only  in  the  vicinity  of  the  place  where  the  goods  to  which  they 
are  attached  are  made,  or  the  persons  who  use  them  reside. 

The  fact  that  the  plaintiff  has  not  yet  extended  his  trade  to 
the  territory  occupied  by  the  defendant  has  been  held,  in  registered 
trade-marks  cases,  to  be  no  defense  to  an  injunction. ^^  But  if 
the  use  of  a  name  or  mark,  not  a  registered  mark,  will  cause 
confusion  in  some  locahty  with  a  mark  well  known  there,  the 
use  of  the  foreign  name  has  been  enjoined  in  most  cases  where 
this  question  has  been  raised.  It  has  been  held,  however,  that 
even  with  registered  trade-marks  the  rights  of  the  user  do  not 
always  extend  to  the  bounds  of  the  jurisdiction  registering  the 
mark,  but  that  general  rights  in  a  registered  mark  may  be  lost 

way,    13    Beav.    209-1850;    Seixo   v.  institution  of  the  suit.    Held,  that  the 

Provezende,  L.  R.  1  Ch.  App.  192-1865;  word  "Hygeia"  was  not  a  descriptive 

Wothers-poon  v.  Currie,  L.  R.  5  Eng.  word,  but  had  come  to  denote  the 

&    Ir.    App.    508-1872,     "Glenfield  product  of  the  complainant;  that  the 

Starch;"  Seigert  v.  Findlater,  7  Ch.  defendant's  use  of  the  word,  though 

Div.  801-1878,  "Angostura  Bitters;"  innocent   at   first,    was   not   justified 

Thompson    v.    Montgomery,    41    Ch.  after  the  facts  as  to  the  prior  use  were 

Div.  35-1889;  affirmed  in  App.  Cas.  known   to   the   defendant;   that   the 

217-1891,  "Stone  Ale."  right  to  an  injunction  was  not  affected 

1"  Hygeia    Distilled    Water    Co.    v.  either  by  the  length  of  time  during 

Consolidated  Ice  Co.,   144  Fed.   139-  which  defendant  had  used  the  word, 

1906  (C.  C.  W.  D.  Pa.)  affirmed,  151  nor   by   the   fact    that   plaintiff   had 

Fed.  10.    Complainant  and  its  prede-  not   yet    extended    its    business    to 

cessors   had   for   over   twenty   years  the  locality  occupied  by  the  defend- 

distilled   and   sold   water   of   a   high  ant. 

grade,  advertised,  marked,  and  known  '^  Hygeia  Distilled  Water  Co.  v. 
as  "Hygeia  Water,"  and  had  built  Consolidated  Ice  Co.,  144  Fed.  139- 
up  a  large  trade  in  some  states,  but  1906  (C.  C.  Pa.);  affirmed,  151  Fed. 
had  done  practically  no  business  in  10-1907  (C.  C.  A.  3d  Cir.);  citing 
Pittsburg  and  vicinity.  Neither  party  Derringer  v.  Plate,  29  Cal.  296-1865; 
knew  of  the  use  of  the  name  "Hygeia"  87  Am.  Dec.  170;  Hopkins  on  Trade- 
by  the  other  till  shortly  before  the  Marks,  §  13. 


74  Secondary  Meaning 

by  conduct  of  the  user  amounting  to  estoppel.^'"  See  chapter  on 
"Legal  Basis  of  the  Action  for  Unfair  Competition." 

The  value  of  trade-marks  is  measured  by  the  extent  of  their 
celebrity.  A  trade-mark  be  it  ever  so  original  and  attractive  and 
apt  is  valuable  only  as  it  becomes  known  as  a  guidepost  to  its  user's 
store  or  factory.  Hence  the  value  of  every  trade-mark  consists  in 
the  association  in  the  minds  of  the  public  between  itself  and  the 
owner  of  the  goods  it  identifies.  Secondary  meaning  is  the  name 
applied  to  the  trade  meaning  that  a  word  or  name  in  general  use 
acquires  by  such  association. 

Recognizing  these  facts,  the  cases  generally  hold  that  rights  in  a 
common-law  mark  extend  only  as  far  as  knowledge  of  the  mark  has 
gone  and  the  goods  upon  which  it  appears  have  been  sold.  Prac- 
tically speaking,  this  condition  of  affairs  may  easily  result  in 
commercial  confusion.  For  instance,  "Boston  Wafers"  may  be 
sold  under  that  name  by  the  National  Wafer  Co.  in  most  states 
of  the  country,  but  in  Ohio,  Michigan,  West  Virginia  and  Virginia 
the  name  may  be  used  only  by  the  C.  A.  Briggs  Co.^^  Commer- 
cially this  is  most  unfortunate,  not  from  the  standpoint  of  the 
persons  using  the  names,  but  from  a  public  standpoint.  The 
person  who  goes  from  Indiana  where  "Boston  Wafers"  means 
the  goods  of  the  National  Wafer  Co.  to  Ohio,  finds  that  in  his 
new  home  this  name  is  legally  protected  as  the  name  of  the  goods 
of  the  Briggs  Co. 

In  Hanover  Star  Milling  Co.  v.  Metcalf,^^  the  court  held  that  the 
brand  "Tea  Rose"  for  flour  could  be  used  by  one  manufacturer 
in  one  section  of  the  country  and  by  another  in  a  different  section. 
The  court  stated  that  this  was  a  most  unusual  case;  it  has  found 
no  decided  case  like  it.  Nevertheless  this  rule  raises  a  serious 
practical  question  for  many  business  houses.  See  discussion  at 
p.  28  hereof.  The  person  who  does  a  substantial  business  in  any 
section  of  the  country  under  a  brand  which  thereby  acquires  a 
secondary  nieaning  in  reference  to  his  goods  acquires  an  interest 
in  it  which  should  be  sufficiently  protected  to  enable  him  to  use 
it  in  the  further  extension  of  his  business  to  any  section  of  the 
country  into  which  his  energy  enables  him  to  enter. 

It  would  seem,  therefore,  that  in  suits  where  two  parties  lay 

""  226  Fed.  546  (1915).  >'  240  U.  S.  403-1916. 

'^Briggs   v.   Nat.    Wafer   Co.,    102 
N.  E.  Rep.  87-1913. 


Secondary  Meaning  of  Trade  Phrases  75 

claim  to  the  same  mark  the  courts  should  be  slow  to  uphold  the 
rights  of  the  second  user  of  the  mark,  unless  definite  acts  on  the 
part  of  the  first  user  are  shown  which  indicate  clearly  that  he  has 
elected  to  confine  his  use  of  the  brand  to  the  territory  already 
occupied  by  him. 

For  further  discussion  of  this  question  see  chapter  on  "Legal 
Basis  of  the  Action  for  Unfair  Competition." 

§  39.  Secondary  Meaning  of  Trade  Phrases.  —  Goods  may  be 
identified  in  the  public  mind  by  a  phrase  as  well  as  by  a  single 
word,  and  there  is  nothing  in  the  mere  fact  that  this  identification 
is  caused  by  a  phrase,  rather  than  in  some  other  way,  that  con- 
stitutes a  defence  to  an  unfair  competition  action.  There  are 
some  decisions  of  the  Patent  Office  holding  that  trade  phrases 
may  not  be  registered.  It  is  a  fact  however  that  trade  phrases 
may  be  protected  in  unfair  competition  cases  where  the  defend- 
ant's use  of  them  has  caused  confusion. 

Such  a  secondary  meaning  may  be  acquired  by  words  in  gen- 
eral use,  when  a  phrase  made  up  of  them  has  come  to  have  a  par- 
ticular meaning  in  the  minds  of  the  public.  This  has  been  held 
true  where  the  phrase  ''incorporated  accountant"  had  come  to 
mean  in  England  that  the  person  to  whom  it  was  applied  was  a 
member  of  a  certain  corporation  called  "Society  of  Accountants 
and  Auditors."  ^"^    See  note  for  further  examples. 

In  another  case,  involving  a  gall  cure  for  animals,  the  phrase 
"Be  Sure  to  Work  the  Horse"  was  used  on  the  goods  of  one  of  the 
parties,  and  this  product  became  known  as  the  ' '  Work  the  Horse 
Cure."  After  a  considerable  period,  the  defendants  entered  the 
field  with  a  remedy  called  the  "Four  Horse  Gall  Cure,"  and  used 

^*  Society  of  Accountants  and  Au-  phrase     "incorporated     accountant" 

ditors  V.  Goodway  (1907,  Ch.  Div.),  had  acquired  a  secondary  meaning, 

76  L.  J.  Ch.  384.  and  that  members  of  the  new  com- 

Plaintiff   society   was  incorporated  pany  should  not  be  allowed  to  use 

in  1885,  and  it  admitted,  as  members  this  designation,  nor  the  company  to 

only    well-qualified    accountants;    it  hold  out  its  members  as  entitled  to 

gained    a    high    reputation    and    its  use  it  in  such  a  way  as  to  lead  to  the 

members  were  usually  described  as  belief  that  they  were  members  of  the 

"incorporated    accountants,"    which  plaintiff  society.     See  similar  Scotch 

term  was  generally  understood  to  im-  case.    Soc.  of  Accts.  in  Edinh.  v.  Corp. 

ply  membership  in  this  society.     In  of  Accts.,   20  Ct.  Sess.  Cas.   750,   4 

1905,  a  new  company  was  formed  for  Ser. 
similar    purposes.      Held,    that    the 


76  Secondary  Meaning 

the  plirase  "Always  Work  the  Horse  While  Using  the  Cure", 
which  was  condemned  by  the  court. '^" 

§  40.  Names  of  Places.  —  A  name  often  becomes  associated 
with  a  particular  place  because  of  the  existence  there  of  a  business 
plant;  again,  the  name  may  be  associated  with  the  place  before 
the  business  is  started  there,  and  the  business  be  named  from  the 
place.  In  either  event  the  business  may  move  and  seek  to  take 
with  it  the  name  and  to  prevent  others  who  may  buy  the  plant  or 
property  it  abandons  from  using  the  name.  In  Nicholson  v.  Bu- 
chanan,^^  plaintiff  set  up  a  distillery  in  1847,  which  he  called  the 
"Black  Swan  Distillery,"  and  in  1897  sold  it  and  the  plant  was 
moved  away.  The  defendant,  a  spirit  merchant,  purchased  the 
place  where  the  distillery  stood  and  advertised  that  the  Black 
Swan  had  been  rebuilt,  and  contended  he  had  a  right  to  the  name 
as  it  came  from  the  fact  that  a  public  house  of  that  name  once 
stood  on  the  spot.  Held,  defendant's  reputation  was  as  a  dealer  in 
Scotch  whiskey.  The  name  Black  Swan  was  associated  with  dis- 
tilling gin,  or  whiskey,  and  defendant  did  not  deal  in  gin.  No 
evidence  was  shown  of  anyone  being  misled.    Action  dismissed. 

The  value  of  a  name  may  be  based  on  usage  prevailing  only  in 
certain  particular  localities,  in  which  the  party  using  the  name 
or  mark  has  established  his  business.  Sartor  v.  Schaden  holds  ^^ 
that  "When  the  question  of  unfair  trade  is  involved,  one  person 
may  have  a  property  right  in  the  secondary  use  of  a  word  in  one 
locality  and  another  in  the  same  word  or  device  in  another.  This 
is  one  of  the  distinguishing  features  between  a  trade-mark, 
strictly  speaking,  and  a  trade  name.  One  is  of  necessity  geo- 
graphical, and  covers  the  entire  limits  of  the  jurisdiction  of  the 
sovereignty  granting  the  right;  and  the  other  is  of  necessity  local, 
not  founded  upon  any  authority  or  right  from  the  state,  but 
based  upon  usage  in  the  particular  locality,  or  localities,  in  which 
the  party  is  doing  or  seeks  to  do  business."  ^"^  This  statement 
must  be  considered  with  Hanover  Star  Milling  Co.  v.  MetcalJ.^'''^ 

i**^  Bickmore  Gall  Cure  Co.  v.  Karns,  "  Draper  v.  Skerrett,  116  Fed.  206; 

134  Fed.  833-1905;  C.  C.  A.,  3rd  Cir.  Hainque  v.  Cijdops  Iron  Works,  136 

'5 19  R.  P.  C.  321-1900.   Royal  Irish  Cal.  351;  68  Pac.  1014;  Clark  Thread 

Linen  Hurd  &  Co.,  Ex  parte,  590  G.  Co.  v.  Armitnge,  67  Fed.  896,  C.  C.  S. 

1763;   "Every  Day  Soap,"  92  Fed.  D.  N.  Y.  (1895);  74  Fed.  936  C.  C.  A., 

914,  102  Fed.  490.  2d  Cir.  (1896). 

'8  125  Iowa,  696-704-1904;  101  N.  ""  240  U.  S.  403  (1916). 
W.  511. 


Existence  of  Secondary  Meaning  Is  Question  of  Fact     77 

See  chapter  on  ''Geographical  Names." 

§  41.  Existence  of  Secondary  Meaning  is  a  Question  of  Fact. 

—  Secondary  meaning  is  a  question  of  fact  and  a  different  question 
in  each  case.  ''The  whole  matter  Hes  in  pais.''  ^^  Evident  decep- 
tion for  a  year  may  not  warrant  such  a  finding  in  absence  of  intent 
to  defraud. ^^ 

The  facts  of  each  case  must  be  considered  in  deciding  as  to  the 
existence  of  secondary  meaning.  Long  use  of  a  name  by  one  con- 
cern creates  a  strong  presumption  of  the  existence  of  such  associa- 
tion. The  volume  of  sales,  not  in  dollars  and  cents  but  in  the  num- 
ber of  articles  sold  and  the  amount  of  advertising  of  the  name, 
are  both  important  considerations. 

§  42.  Association  of  Names  with  Goods  the  Identity  of  the 
Makers  of  which  is  Unknown.  —  Secondary  meaning  may  exist 
between  a  name  and  goods  the  maker  of  which  is  unknown  to 
the  average  buyer  of  them,  as  well  as  between  a  name  and  a  manu- 
facturer or  dealer  who  is  known  to  the  consumer.  There  are 
many  specific  articles  in  all  general  stores,  which  are  constantly 
asked  for  by  some  descriptive  or  semi-descriptive  name.  The 
buyer  seeks  the  product  of  some  one  particular  concern.  He 
does  not  know  its  name,  or  its  location,  or  whether  it  is  a 
corporation  or  an  individual.  He  only  knows  he  seeks  a  partic- 
ular thing  known  by  a  name  familiar  to  him.  There  are 
brands  of  diaries  on  the  market  that  have  been  sold  for  years, 
for  which  buyers  have  a  decided  preference,  yet  probably  not 
one  in  a  hundred  of  these  persons  could  tell  the  name  of  the 
maker.  Nevertheless  this  buyer's  preference  for  the  goods  of 
this  unknown  concern  is  a  species  of  industrial  property  having 

18 179  U.  S.  677.  dressed  "Crookston  Marble  Works." 

^^  Nesne  v.  Sundet,  93  Minn.  299;  In  June,  1902,  they  formed  a  corpora- 

101  N.  W.  490-1904.    In  1901,  plain-  tion  under  name  "Crookston  Marble 

tiffs  formed  partnership  at  Crookston,  Works."    Court  found  that  there  was 

Minnesota,  under  the  name  "Crooks-  no  intent  to  defraud  on  part  of  either 

ton     Marble     &     Granite     Works."  plaintiff   or   defendant.     Held,    that 

Two  weeks  later,  they  changed  their  plaintiff  first  adopted  the  name  and 

name  to  "Crookston  Marble  Works."  that  the  defendants  acquired  no  right 

Nine  years  before,  defendants  began  in  the  name  because  mail  intended 

business  at  the  same  place  as  " North-  for   "Northwestern   Marble   Works" 

western  Marble  Works"  and  used  the  was  addressed  to  "Crookston  Marble 

name   "Marble   Works"   as   a   sign.  Works."   No  vested  right  in  that  name 

Ten  per  cent,  of  their  letters  were  ad-  accrued  to  the  defendants. 


78  Secondary  Meaning 

a  very  decided  market  value  and  it  rests  upon  the  rule  of 
secondary  meaning. 

§  43.  Ten  Year  Trade-Mark  Law.  —  The  so-called  Ten  Year 
Clause  of  the  j^resent  Trade-mark  Statute  is  a  codification  of 
the  secondary  meaning  theory.  In  effect,  this  clause  creates 
a  presumption  that  any  mark,  whether  it  is  of  such  a  character  as 
to  become  a  common-law  mark  or  not,  if  used  continuously  and 
exclusively  by  the  registrant  for  ten  years  prior  to  February  20, 
1905,  may  be  registered  under  the  act.  See  discussion  of  this 
clause  in  the  chapter  on  "Registered  Trade-Marks  and  the  Fed- 
eral Trade-Mark  Act." 

The  application  of  the  rules  of  secondary  meaning  in  the  various 
kinds  of  cases  such  as  family  name  cases,  corporate  name  cases, 
etc.,  is  discussed  in  the  chapters  devoted  to  each  particular  sub- 
ject.   See  also  title  ''Secondary  Meaning"  in  Index. 


CHAPTER  V 

Trade  Names  —  General  Principles 

Section  44.  Introductory. 

45.  Business  names  as  distinguished  from  marks,  designs,  devices,  etc. 

46.  Difference  between  abstract  names  of  objects  and  trade  names. 

47.  Lord  Kay's  summary  of  the  law  of  names. 

48.  Names  considered  as  transitory  or  personal  and  as  local  or  fixed; 

hotel  names. 

49.  Phrases  such  as  "formerly  with"  and  "successor  to,"  etc. 

50.  General  or  common  names  of  an  article  and  names  descriptive  of 

construction  necessary  to  it. 

51.  Unfamiliar  or  scientific  words  used  as  names  of  goods. 

52.  Artificial  or  made-up  words. 

53.  Names  appealing  to  the  eye  as  similar. 

54.  Names  idem  sonans. 

55.  Foreign  words  as  names  of  goods. 

56.  Abbreviation  of  names  of  goods  —  nicknames. 

57.  Fraudulent  use  of  coincidence  in  meaning  of  names. 

58.  Numerals  and  letters  as  names  of  goods. 

59.  Numerals  and  letters  used  to  designate  grade  of  goods. 

60.  Numerals  indicating  source  or  origin. 

61.  Initials  as  names  of  goods. 

62.  Numerals  used  to  designate  series,  etc. 

63.  Names  of  goods  intended  for  export. 

64.  Signs. 

65.  Street  addresses,  etc. 

66.  Use  of  suffix  "&  Co.",  etc. 

§  44.  Introductory.  —  The  name  of  a  thing  and  the  thing 
itself  are  hardly  distinguishable.  It  is  seldom  that  they  can 
be  separated.  Injure  one  and  the  other  suffers.  Lower  the 
quality  of  the  goods  themselves  and  the  name  becomes  less  val- 
uable. Apply  the  name  to  some  similar  but  inferior  article  or 
to  a  cheaper  article  of  ill  repute,  and  the  value  of  the  name  be- 
comes materially  less.  Trade  names  frequently  are  guarded 
with  as  zealous  care  as  a  name  of  a  family.  They  may  be  libeled 
and  slandered,  misused  and  discredited  just  as  personal  names 
are  libeled  and  misused. 

With  the  growth  of  trade,  with  the  increase  of  transportation 

79 


80  Trade  Names  —  General  Principles 

facilities,  with  the  multipUcation  of  means  of  making  an  article 
of  trade  known  to  the  pubhc,  and  equally  with  the  multiplication 
of  methods  of  quickly  injuring  its  reputation,  the  law  which 
governs  the  protection  given  to  trade  names  has  become  more 
explicit  and  more  fully  defined.  Underneath  all  this  develop- 
ment, however,  lies  the  same  principle  —  so  often  referred  to 
before  —  that  one  must  not  pass  off  his  goods  as  those  of  another, 
must  not  use  his  trade  name  in  such  a  way  as  to  give  the  impres- 
sion that  it  is  the  trade  name  of  another,"  or  to  cast  discredit  upon 
the  reputation  of  his  rival  or  his  rival's  product. 

§  45.  Business  Names  as  Distinguished  from  Marks,  De- 
signs, Devices,  etc.  —  It  is  to  be  remembered  that  trade  names 
differ  from  trside-marks,  trade  designs  and  devices.  The  exclusive 
right  to  use  a  trade  name  imposes  upon  competitors  a  more  bur- 
densome restriction  than  the  right  to  use  a  mark.  It  is  not  un- 
reasonable to  say  to  traders  that  they  shall  not  imitate  an  ar- 
bitrary mark  or  device  adopted  by  one  of  them;  but  to  say  to  a 
person  that  he  shall  not  use  his  own  family  name  in  the  manufac- 
ture or  sale  of  an  article  is  quite  a  different  matter.  Accordingly, 
various  limits  have  been  set  to  the  right  to  exclude  others  from 
the  use  of  certain  classes  of  words  and  names  in  designating  goods, 
while  like  limits  have  not  been  imposed  as  to  the  use  of  marks, 
designs,  and  devices.  It  would  obviously  be  unjust,  for  instance, 
to  forbid  a  man  the  use  of  his  own  name  in  trade,  when  no  fraud 
or  damage  to  others'  rights  arising  therefrom  was  shown,  although 
it  would  not  be  unjust  to  forbid  him  to  use  a  fanciful  device  already 
adopted  and  used  by  a  rival  although  no  fraud  is  shown. 

Again,  a  name  of  a  business  or  of  an  article  of  trade  gives  more 
information  than  a  trade  device  or  emblem.  A  name  may  disclose 
the  name  of  the  maker  or  seller  of  goods  or  the  place  of  manufac- 
ture or  the  locality  of  a  business,  perhaps  all  of  these  facts,  while 
an  emblem  indicates  these  and  similar  facts  usually  by  association 
only.  Failure  to  understand  and  observe  this  difference  between 
an  emblem  and  a  name  is  often  the  cause  of  unfair  competition. 
There  is  no  question  that  an  emblem  which  has  been  lawfully 
chosen  and  appropriated  to  the  use  of  one  person  is  property; 
but  it  is  not  always  easy  to  know  whether  or  not  one  has  rights  in 
a  trade  name  he  is  using,  sufficient  to  entitle  him  to  protection  in 
the  sole  use  of  the  name  in  the  particular  business  in  which  he 
°  See  Bates  Mfg.  Co.  v.  Bates  Numbering  Co.,  172  Fed.  at  p.  895-1909. 


Abstract  Names  and  Trade  Names  81 

may  be  engaged.  When  such  rights  exist  they  rest  on  the  doc- 
trine of  "secondary  meaning"  (see  this  term  in  index  and  the 
chapter  entitled  "Secondary  Meaning"). 

§  46.  Difference  Between  Abstract  Names  of  Objects  and 
Trade  Names.  —  A  trade  name  is  to  be  distingui.shed  from  the 
abstract  or  general  name  of  the  article.  When  an  article  first 
becomes  known,  it  is  without  a  name  and  must  be  associated  with 
a  word,  —  must  be  named  —  christened.  Such  name,  thus  given, 
everyone  has  a  right  to  use,  for  it  is  by  this  name  only  that  it  can 
be  known,  dealt  in  and  designated.  A  new  metal,  for  example, 
is  discovered.  It  must  be  given  a  name,  and  the  inventor  or  / 
someone  else  calls  it  aluminum  and  straightway  that  is  its  name. 
Everyone  has  a  right  to  use  that  name;  for  it  would  be  entirely 
against  public  policy  and  individual  rights  to  allow  any  one 
person  to  obtain  a  monopoly  of  this  general  or  generic  name. 

On  the  other  hand,  a  business  or  trade  name  is  one  that  iden- 
tifies a  particular  concern,  or  the  goods  of  one  concern.  When 
such  a  name  is  fanciful  it  is  a  trade-mark.  Where  it  is  a  word  in 
the  pubhc  domain  but  used  in  a  trade  sense,  it  is  a  trade  name. 

§  47.  Lord  Kay's  Summary  of  the  Law  of  Names.  —  Lord 
Kay,  in  Powell  v.  Birmingham  Vinegar  Brewery  Co.,^  has  sum-    , 
marized  the  rules  relating  to  the  law  of  trade  names  as  follows: 
"The  law  relating  to  this  subject  may  be  stated  in  a  few  proposi- 
tions: 

"(1)  It  is  unlawful  for  a  trader  to  pass  off  his  goods  as  the 
goods  of  another." 

"(2)  Even  if  this  is  done  innocently  it  will  be  restrained.  ' 
{Millington  v.  Fox,  3  Myl.  &  Cr.  338-1838.)" 

"  (3)  A  fortiori  if  done  designedly,  for  that  is  a  fraud." 

"(4)  Although  the  first  purchaser  is  not  deceived,  neverthe- 
less if  the  article  is  so  delivered  to  him  as  to  be  calculated  to  de- 
ceive a  purchaser  from  him,  that  is  illegal.  (Sykes  v.  Sykes, 
3  B.  &  C.  541-1824.)" 

"(5)  One  apparent  exception  is  that,  where  a  man  has  been 
describing  his  goods  by  his  own  name,  another  man  having  the 
same  name  cannot  be  prevented  from  using  it,  though  this  may 
have  the  effect  of  deceiving  purchasers.  {Burgess  v.  Burgess, 
3  De  G.  M.  &  G.  896-1853)." 

"(6)  But  this  exception  does  not  go  far.    A  man  may  so  use 
>  2  Ch.  54-79-1896. 


82  Trade  Names  —  General  Principles 

his  own  name  as  to  infringe  the  rule  of  law:  'It  is  a  question  of 
evidence  in  each  case  whether  there  is  false  representation  or 
not,'  per  Turner,  L.  J.,  in  Burgess  v.  Burgess  (3  De  G.  M.  &  G. 
896-1853,  at  p.  905).  So  he  may  be  restrained  if  he  associates 
another  man  with  him  so  that  under  their  joint  names  he  may 
pass  off  goods  as  the  goods  of  another  person.  {Croft  v.  Day, 
7  Beav.  84-1843;  Clayton  v.  Day,  26  Sol.  Jour.  43-1881 ;  M.  Mela- 
chrino  &  Co.  v.  Melachrino  Egyptian  Cigarette  Co.,  4  R.  P.  C.  215- 
1887.)" 

"(7)  Another  apparent  exception  is,  where  a  man  has  under 
a  patent  had  a  monopoly  for  fourteen  years,  and  has  given  the 
article  a  descriptive  name,  he  cannot,  when  the  patent  has  ex- 
pired, prevent  another  from  selling  it  under  that  name.  {Young 
V.  Macrae,  9  Jur.  N.  S.  322-1862;  Linoleum  Manufacturing  Co. 
V.  Nairn,  7  Ch.  Div.  834-1878.)" 

"  (8)  I  am  not  sure  this  would  be  so  if  the  name  so  used  were 
the  name  of  the  patentee,  or  even  a  purely  fanciful  name  not 
descriptive." 

"(9)  Certainly,  where  there  has  not  been  a  patent,  and  an 
article  has  been  made  and  sold  under  a  fanciful  name  not  de- 
scriptive, so  that  the  article  as  made  by  one  person  has  acquired 
reputation  under  that  name,  another  trader  will  not  be  permitted 
to  use  that  name,  for  a  similar  article  made  by  him.  {Braham 
V.  Bustard,  1  Hem.  &  M.  447-1863;  Cochrane  v.  McNish  &  Son, 
App.  Gas.  225-1896.)" 

"(10)  To  this  last  proposition  there  is  again  a  limitation.  If 
the  first  maker  has  slept  upon  his  rights,  and  allowed  the  name 
to  be  used  by  others  until  it  has  become  puhlici  juris,  the  court 
will  not  interfere." 

§  48.  Names  Considered  as  Transitory  or  Personal  and  as 
Local  or  Fixed;  Hotel  Names.  —  Trade  names  are  either  local 
or  fixed,  or  else  transitory  or  personal  in  character,  —  the  one 
attaching  to  a  place  regardless  of  the  ownership  of  the  name  at 
any  one  time,  the  other  attaching  to  the  person  regardless  of 
where  the  person  locates  himself.  This  distinction  is  important 
in  cases  involving  names  of  hotels  and  buildings. 

The  protection  afforded  by  law  is  not  limited  to  the  exact  or 
formal  name  employed  by  the  one  using  it  to  identify  his  goods 
or  his  business.  For  instance  a  nickname  by  which  a  hotel 
has  become  known  is  entitled  to  such  protection;  for  the  use  of 


Transitory  or  Personal  and  Local  or  Fixed  Names    83 


such  a  nickname  by  a  rival  may  work  injury  to  the  complainant's 
house  and  business.  Some  hotel  names  are  personal  names, 
others  impersonal,  certain  of  these  names  attach  to  a  place,  to  a 
particular  hotel  regardless  of  its  ownership;  while  others  have 
been  held  to  be  the  property  of  a  person  and  to  attach  to  him 
rather  than  to  the  place.  Such  a  personal  hotel  name  was  in- 
volved in  a  California  case  in  which  the  plaintiff  leased  land 
where  he  erected  and  conducted  a  hotel  to  which  he  gave  a  name. 
Later  he  moved  and  used  the  same  name  on  a  new  hotel;  it  was 
held  that  the  name  was  his  property  and  did  not  pass  to  the  owner 
of  the  first  named  premises.^ 

Again,  a  clear  distinction  was  taken  by  the  California  court, 
between  the  reputation  a  name  or  appellation  gives  to  a  certain 
business  locality,  and  which  adheres  to  that,  without  any  refer- 
ence to  the  proprietor  of  the  establishment  personally,  and  the 
designation  or  name  for  a  locality,  at  which  a  certain  business 
is  carried  on,  and  which  is  personal  and  does  not  attach  to  the 

2  Woodward  v.  Lazar,  21  Cal.  449-      of  its  surrender,  it  being  a  trade  name. 


1863.  Defendants  were  restrained 
from  using  the  name  "What  Cheer 
House,"  as  the  name  of  a  hotel  in 
the  city  of  San  Francisco.  Wood- 
ward, plaintiff,  first  erected  a  hotel 
building  on  leased  premises  and  gave 
it  that  name.  During  his  occupancy 
as  tenant,  he  purchased  and  built  on 
the  adjoining  lot,  another  hotel  edi- 
fice, and  occupied  it  also.  Afterward 
he  surrendered  the  leased  premises, 
and  occupied  the  second,  and  con- 
tinued to  conduct  a  hotel  business  on 
his  own  premises  under  the  name  of 
"What  Cheer  House."  The  defend- 
ants later  purchased  the  premises  first 
described,  and  conducted  thereon  a 
hotel  under  the  name  "Original  What 
Cheer  House."  The  contention  of  the 
plaintiff,  on  injunction,  was  that  the 
name  belonged  to  him,  as  the  pro- 
prietor of  the  hotel  last  established 
which  he  had  owned  and  occupied, 
which  name  he  had  theretofore  used 
continuously  while  proprietor  of  the 
hotel  last  leased,  and  up  to  the  date 


The  contention  of  the  defendant  was, 
that  the  name  was  a  mere  designatic«i 
of  the  building  in  which  the  business, 
at  first  established,  was  conducted, 
and  that  it  attached  to  the  building 
at  the  termination  of  the  plaintiff's 
lease,  and  passed  to  him  by  his  pur- 
chase thereof  from  the  plaintiff's 
lessor.  Denying  the  latter  proposi- 
tion, the  court  said:  "A  person  may 
have  a  right,  interest,  or  property  in  a 
particular  name,  which  he  has  given 
to  a  particular  house,  and  for  which 
house,  under  the  name  given  to  it,  a 
reputation  and  good-will  may  have 
been  acquired;  but  a  tenant,  by  giving 
a  particular  name  to  a  building,  which 
he  applies  to  some  particular  use,  as  a 
sign  of  the  business  done  at  that  place, 
does  not  thereby  make  the  name  a 
fixture  to  the  building,  and  transfer  it 
irrevocably  to  the  landlord"  (id. 
p.  452).  See  also  Nicholson  v.  Bu- 
chanan, 19  R.  P.  C.  321-1900;  suvra, 
§38. 


84  Trade  Names  —  General  Principles 

property,  but  remains  subject  to  the  control  of  the  proprietor. 
In  treating  of  this  distinction  the  court  here  said:  "Plaintiff's 
claim  for  protection,  so  far  as  his  right  results  from  the  good-will 
acquired  for  the  name  while  it  was  applied  exclusively  to  the  leased 
premises,  may  not  be  sustainable,  yet  he  is  entitled  to  protection 
in  the  exclusive  use  of  the  name  as  proprietor  of  the  new  house" 
(id.  p.  453). 

Had  the  name  of  the  establishment  formed  an  element  of  the 
good-will  of  any  hotel  business  conducted  on  these  particular 
premises,  it  might  have  been  lost  by  the  conveyance  to  the  de- 
fendant; but  as  it  was  rather  a  personal  possession  of  the  pro- 
prietor, while  lessee,  and  not  an  impersonal  feature  of  this  busi- 
ness, it  did  not  pass  to  the  landlord,  but  remained  subject  to  the 
control  of  the  lessee  at  the  termination  of  the  lease. 

In  Howard  v.  Henriques,^  it  appears  that  the  plaintiff's  hotel 
was  called  the  "Irving  House"  but  it  soon  became  generally 
known  as  the  "Irving  House"  and  "Irving  Hotel,"  indiscrim- 
inately. The  defendants  named  their  house  the  "Irving  Hotel." 
There  was  no  question  of  resemblance  between  the  two  hotels, 
or  the  two  signs.  It  was  the  good- will  represented  by  the  name 
that  was  protected,  not  merely  the  name. 

The  right  to  use  a  hotel  name  is  entirely  in  the  control  of  the 
owner  of  the  name.  If  he  contracts  with  a  person  allowing  the 
use  of  it  for  a  certain  period,  at  the  end  of  that  time  he  may  as- 
sume entire  control  of  it  again,  and  for  the  person  who  has  been 
using  it  under  the  contract  to  continue  to  do  so  will  subject  him 
to  injunction.'* 

'  5  Super.  (3  Sandf.)  (N.  Y.)  725-  man  has,  by  close  attention  to  the 

1851.     Plaintiff  owned  and  ran  "Irv-  comfort  of  his  guests,  and  by  superior 

ing  House"  opened  in  1848.     In  1851,  energy,  made  his  hotel  desirable  for  the 

defendant  opened  in  same  city  "  Irving  traveler,  and  caused  its  name  to  be- 

Hotel."    The  court  said:  "We  think  come  popular  throughout  the  land, 

that  the  principle  of  the  rule  is  the  amjther  man  ought  not  to  be  per- 

samc,  to  whatever  subject  it  may  be  mitted  to  assume  the  same  name  in 

applied,  and  that  a  party  will  be  pro-  the  same  town,  and  thus  deprive  him, 

tected  in  the  use  of  a  name  which  he  who  first  appropriated  the  name,  of 

has  appropriated  and  by  his  skill  ren-  some  portion  of  the  fruits  of  that 

dered  valual)le,  whether  the  same  is  good-will  which  honestly  belongs  to 

upon    articles    of    personal    property  him  alone." 

which  he  may  manufacture,  or  apphed  "  Marsh  v.  Billings,  61  Mass.  322- 

to  a  hotel  where  he  has  built  up  a  pros-  1851.    The  proprietor  of  the  Revere 

perous  business.    *    *    *"     "If  one  House  arranged  with  defendants  to 


Transitory  or  Personal  and  Local  or  Fixed  Names    85 


It  would  seem  that  if  a  person,  while  lessee  of  a  hotel  prop- 
erty, by  his  energy  and  industry,  builds  up  a  reputation  for  the 
house  that  brings  to  it  a  large  increase  of  business  and  adds  value 
to  the  property,  on  surrendering  it  to  the  landlord,  he  should  be 
entitled  to  some  return  for  the  increase  in  its  value,  if  such  in- 
crease was  solely  due  to  his  efforts. 

Where  the  name  of  a  hotel  was  attached  to  it  before  a  lessee 
of  it  took  possession,  the  fact  that  the  lessee  increases  by  his 
energy  and  skill  the  value  of  the  name  is  not  a  reason  why  he 
may  use  the  name  in  another  place  in  competition  with  the 
owner,  because  to  do  so  would  mislead  the  public.^ 

A  person  who  sublets  a  boarding-house  —  which  the  original 
lessee  has  named  "Norwood"  (the  place  being  unnamed  before) 
—  may  not  restrain  the  lessee  from  using  name  ''Norwood  Hall" 
on  adjoining  premises.^ 


have  carriages  at  the  station  to  carry 
passengers  to  the  Revere  House,  au- 
thorized him  to  use  the  badge  "Re- 
vere House"   on   the   carriages   and 
the  drivers'  caps,  and  gave  him  the 
privilege   of   carrying   all   passengers 
from  the  hotel  to  the  station.    After  a 
time,  the  agreement  with  the  defend- 
ants was  terminated,  and  a  similar 
exclusive  arrangement  was  made  with 
the  plaintiffs.     Defendants,  however, 
still  continued   to  use  the   "Revere 
House"  badge,  and  sought  to  divert 
passengers  from  plaintiffs'  carriages, 
and  there  was  some  evidence  of  actual 
misrepresentation  on  the  part  of  de- 
fendants' employees.    Held,  that  the 
defendants  had  no  right  to  use  the 
"Revere  House"  badge  in  such  man- 
ner as  to  hold  themselves  out  as  hav- 
ing the  patronage  and  confidence  of 
that  house,  and  that  plaintiffs  were 
entitled  to  such  damages  as  the  jury  \ 
from   all   the  evidence  might  judge  I 
reasonable,  and  not  only  for  the  loss  ' 
of  such  passengers  as  plaintiffs  could  ; 
prove  had  actually  been  diverted.        I 
^O'Grady  v.   McDonald,  72  N.  J.  -, 
Eq.    805;  66  Atl.   175-1907.     Com-   ' 


plainant  owned  a  hotel  in  Atlantic 
City,  known  for  twelve  years  as  "The 
Hotel  Dominion."  Defendant,  after 
conducting  this  hotel  as  lessee  for  one 
year,  and  (as  she  claimed)  greatly  in- 
creasing its  reputation,  erected  and 
opened,  a  few  hundred  feet  away  on 
the  same  avenue,  a  new  hotel  under 
the  name  "The  New  Dominion," 
Held,  that  the  use  of  this  name  should 
be  enjoined,  as  tending  to  mislead  the 
public.  Wilcoxen  v.  McCray,  38  N. 
J.  Eq.  466-1884,  infra,  distinguished. 
«  Wilcoxen  v.  McCray,  38  N.  J.  Eq. 
466-1884.  Defendant  in  1881  rented 
a  house  at  Asbury  Park  for  three 
years,  and  occupied  it  as  a  boarding- 
house  for  the  season  of  1881,  placing 
a  sign  marked  "Norwood"  on  the 
front  of  the  house,  which  was  known 
as  the  Norwood  Cottage.  Early  in 
1882,  defendant  sublet  the  house  to 
complainant  from  May  1st  to  Octo- 
ber 15th,  1882,  no  reference  being 
made  to  the  name  of  the  house.  De- 
fendant was  at  the  same  time  erecting 
on  adjoining  land  a  boarding-house 
which  she  occupied  for  the  season  of 
1882,    and,    on    the   front   porch   of 


86  Trade  Names  —  General  Principles 

Where  a  lessee  ran  an  inn  for  three  years  under  name  "Me- 
tuchen  Inn"  and  then  moved  to  another  part  of  the  town,  a 
person  buying  the  building  foraierly  used  by  him  will  not  be 
allowed  to  use  the  name  "Metuchen  Inn."  To  do  this  is  unfair 
competition  —  when  the  name  was  first  used  by  the  lessee  in 
question/ 

Pn  Chadron  Opera  House  Co.  v.  Loomer  ^  the  court  declined  to 
protect  the  plaintiff  in  the  exclusive  use  of  the  name  ''Chadron 
Opera  House"  for  a  building  used  in  part  as  a  theatre,  where 
the  name  had  been  used  by  plaintiff  and  defendants  contem- 
poraneously, until  about  the  time  the  suit  was  brought,  and 
without  an  apparent  intention  on  the  part  of  either,  to  appro- 
priate the  name  to  his  exclusive  use  as  the  distinctive  designation 
of  his  building.  The  court  there  says  that,  to  entitle  a  party  to 
enjoin  the  use  of  such  a  name  by  another,  "he  must  make  it  ap- 
pear, with  at  least  reasonable  certainty,  that  his  adoption  of  the 
name  was  prior  in  time  to  that  of  his  adversary;  that  he  adopted 
and  made  use  of  it  in  such  manner  as  would  reasonably  apprise  the 
pubUc  that  he  intended  it  as  a  distinctive  appellation  for  his  trade, 
commodity  or  place  of  business,  and  that  it  was  not,  at  the  time 
of  his  attempted  appropriation  of  it,  in  common  or  general  use  in 
connection  with  like  businesses,  commodities,  buildings  or  lo- 
calities." 

§  49.  Phrases  such  as  "  Formerly  with  "  and  "  Successor 
to,"  etc.  —  We  now  come  to  the  cases  which  deal  with  the 
rights  of  an  employee,  who  has  left  his  employment,  to  use  the 
name  of  the  person  in  whose  employment  he  has  been,  and  those 
of  a  purchaser  of  the  business  of  another,  to  use  the  name  of  his 

which,  about  June  20th,  she  placed  Inn,"  although  no  such  sign  was  dis- 
the  sign  "Norwood  Hall."  Held,  that  played.  His  lease  expiring,  he  re- 
she  should  not  be  restrained  from  moved  to  another  house  in  the  same 
doing  so,  for,  if  the  name  was  the  borough,  and  there  continued  his 
badge  of  anyone's  business  or  busi-  business  as  an  innkeeper,  putting  up 
ness  reputation,  it  was  that  of  de-  the  sign  "Metuchen  Inn."  Defend- 
fendant,  and  not  complainant.  ant  purchased  the  house  first  occupied 
^  Busch  V.  Gross,  71  N.  J.  Eq.  508;  by  the  complainant,  and  two  months 
64  Atl.  754-1906.  Complainant,  from  after  plaintiff  had  put  up  his  sign 
1903  to  1900  maintained  in  the  on  the  new  place,  defendant  placed 
borough  of  Metuchen  an  inn,  which  in  front  of  his  house  a  sign  "Metu- 
was  well  known  and  appears  to  have  chen  Inn."  Held  unfair  competition, 
been   designated  as   the   "Metuchen  « 71  Nebr.  785;  99  N.  W.  649-1904. 


Phrases  "Formerly  With"  and  "Successor  to"      87 

predecessor.  It  seems  that  one  has  a  right  in  law  to  state  to 
the  pubUc  in  any  proper  way,  the  fact  that  he  has  been  "for- 
merly with"  the  house  which  he  has  left.  This  may  take  the 
form  of  any  one  of  several  phrases  as  "Late  with,"  "From," 
"Formerly  with,"  "Late  of  the  firm  of."  But  if  any  one  of 
these  phrases  is  used,  the  law  will  insist  that  the  name  of  the 
person  using  the  phrases,  and  not  the  name  of  his  former  em- 
ployer, be  prominently  displayed.^    See  chapter  on  "Good- Will." 

A  person  who  enters  a  partnership  with  one  who  owns  a  trade- 
mark will,  on  retiring  from  it,  have  no  interest  in  or  right  to 
use  the  mark  except  by  special  arrangement.  Where  L.  had 
long  sold  "Old  Velvet"  whiskey  and  then  entered  a  partnership 
with  K.  under  the  name  of  L.  &  K.,  and  K.  afterward  retired, 
he  was  held  to  have  no  right  in  the  name  "Old  Velvet."^" 

"A  person  who  has  been  a  manager  of  another's  business, 
has  a  right,  on  setting  up  an  independent  business,  to  make 
known  to  the  public  that  he  has  been  with  the  firm,  but  he  must 
take  care  not  to  do  so  in  a  way  calculated  to  lead  the  public  to 
believe  that  he  is  carrying  on  the  business  of  his  former  employer, 
or  is  in  any  way  connected  with  it."    (Headnote.)  " 

3  Colton    V.     Thomas,    2    Brewst.  similar  business,  displaying  upon  his 

(Pa.)  308-1869;  7  Phila.  257  (Com.  office  a  sign  containing  underneath  his 

Pleas,    Phila.).      Plaintiff    had    pur-  name  the  words  'Late  of  the  Firm,' 

chased  the  right  to  use  for  his  busi-  will  not  be  enjoined,  if  the  sign  is  not 

ness  the  name  "  Colton  Dental  Associa-  painted  in  such  a  manner  as  to  be 

tion,"  and  for  some  years  conducted  likely  to  mislead  the  public." 
a  dental  business  under  that  name.          Lee  v.  Haley,  L.  R.  5  Ch.  App.  155- 

Defendant   was   a   former   employee  1869.    Plaintiffs  had  been  doing  busi- 

of  plaintiff  who  had  opened  a  dental  ness  at  22  Pall  Mall,  under  the  artifi- 

office  of  his  own  some  distance  away  cial  name  of  "Guinea  Coal  Co."    De- 

on    the   same   street,   using    on    his  fendant,  who  had  been  their  manager, 

sign  and  cards  his  own  name  with  set  up  a  rival  business  under  the  name 

the  addition,  "Formerly  Operator  at  of  "Pall  Mall  Guinea  Coal  Co."  at  46 

the  Colton    Dental    Rooms."      The  Pall  Mall.     His  envelopes  and  busi- 

words,  "Formerly  Operator  at"  were  ness   cards  were  printed   in  such   a 

in  much  smaller  letters  than  "Col-  way   as   to   resemble   the   plaintiffs', 

ton  Dental  Rooms."     Held,  that  the  Injunction  was  granted, 
sign  was   calculated  to  mislead  the          ^°  Bluthentkal   v.    Bighie,    30   App. 

public,  and  injunction  granted.  Cas.  (D.  C.)  118-1908, 

Holhrook  v.  Neshitt,  163  Mass.  120-         "  Glenny  v.  Smith,  2  Drew.  &  Sm. 

1895;  39  N.  E.  794  (from  headnote):  476-1865;  Hookham  v.  Pottage,  L.  R. 

"A  person  who  was  formerly  in  the  em-  8  Ch.  App.  91-1872. 
ploy  of  a  firm  and  who  engages  in  a 


88 


Trade  Names  —  General  Principles 


The  use  of  any  device  which  will  cause  a  false  impression  to 
be  given  by  the  use  of  any  of  these  phrases  will  be  enjoined, 
such  as  erecting  and  using  an  awning  which  when  let  down 
covered  all  of  a  sign  except  the  name  of  the  house  which  the  de- 
fendant had  left.^- 

§  50.  General  or  Common  Names  of  an  Article  and  Names 
Descriptive  of  Construction  Necessary  to  it.  —  The  law  of  unfair 
competition  does  not  protect  a  name  which  is  based  on  or  is  truly 
descriptive  of  the  construction  common  to,  or  characteristic  of, 
the  article  in  question.  This  has  been  held  particularly  true  when 
the  rival  articles  described  are  evidently  constructed  so  as  to  adapt 
the  article  to  the  natural  conditions  under  which  it  is  to  be  used, 
and  the  name  is  reasonably  descriptive  of  the  structure  which  has 
resulted  from  such  an  attempt  to  meet  these  natural  conditions. 
"These  matters  are  characteristics  of  the  article  itself,  and  no 
dealer  is  entitled  to  impose  restriction  upon  his  competitors 
with  respect  to  them.  They  do  not  necessarily  or  naturally 
point  to  the  source  or  origin  of  the  goods."  " 

'^Glenmj  y.  Smith,  2  Brew.  &  Sm.  N.  J.  Eq.  354-1896;  34  Atl.  932. 
476-1865.      Defendant   had   been   in      Defendant    having    for    some    years 


plaintiffs'  employ  and  started  in  busi- 
ness on  his  own  account.  Over  his 
shop  he  had  his  own  name,  Frank  D. 
Smith,  printed  in  large  black  letters 
on  a  white  ground;  but  on  the  brass 
plates  under  the  windows  of  his  shop 
he  had  engraved  the  word  "from" 
in  small  letters,  and  the  words 
"Thresher  and  Glenny"  (the  name 
of  plaintiffs'  firm)  in  large  letters. 
He  had  an  awning  in  front  of  his 
shop,  which,  when  let  down,  would 
cover  his  own  name  and  expose  only 
the  name  of  plaintiffs'  firm.  The 
court  held  that  defendant  was  deceiv- 
ing the  public,  and  an  injunction  was 
issued.  Croft  v.  Day,  7  Beav.  84- 
1843;  Lcvtj  v.  Walker,  10  Ch.  Div. 
436-1879;  Turton  v.  Turton,  42  Ch. 
Div.  128-1889;  Hookman  v.  Pottage, 
L.  R.  8  Ch.  App.  91-1872;  Meneely 
v.  Meneely,  62  N.  Y.  427-1875;  Full- 
wood  v.  Fullwood,  9  Ch.  Div.  176-1878. 
Newark   Coal  Co.   v.   Spanglcr,   54 


been  engaged  in  the  coal  business  un- 
der the  name  of  the  Newark  Coal 
Company  (Incorporated),  formed,  with 
others,  in  1892,  a  corporation  un- 
der the  same  name  and  transferred 
to  it  his  business  and  good- will.  He 
was  for  four  years  president  and  a 
director  of  the  company.  He  then 
ceased  to  be  a  director  or  officer, 
though  retaining  stock,  and  went  into 
the  coal  business  on  his  own  account, 
advertising  himself  as  "Formerly  of 
the  Newark  Coal  Company"  and  ap- 
pealing for  orders  to  the  customers 
"who  have  patronized  him  and  his 
company  for  the  past  eleven  years." 
Held  (on  application  for  preliminary 
injunction),  that  he  should  not  be 
enjoined  from  representing  himself 
as  formerly  connected  with  the  com- 
pany. Court  disapproves  here  of 
Partridge  v.  Menck,  2  Sandf.  Ch. 
(N.  Y.)  622-1845. 

'•'  Heide  v.  Wallace  &  Co.,  135  Fed. 


General  or  Common  Names  of  an  Article,  etc.      89 

No  such  general  name  of  the  article  to  which  it  is  applied  can 
be  appropriated  exclusively,  for  it  is  publici  juris.  If  such  a 
name  could  be  appropriated  by  any  one  person,  it  would  be  as 
if  a  person's  name  could  be  used  only  by  one  person  while  to 
the  rest  of  the  world  he  would  be  nameless.  Such  a  name  is  not 
capable  of  appropriation  as  a  technical  trade-mark,  or  as  the 
exclusive  property  of  one  person  under  the  broader  rules  of  un- 
fair competition.  "Flaked  Oatmeal,"  "Whirhng  Spray,"  ''Air 
Cushion,"  are  names  of  this  kind.  In  Marvel  Co.  v.  Pearl,^^  the 
question  was  as  to  the  right  of  one  person  to  appropriate,  to  the 
exclusion  of  others,  the  elements  of  a  mechanical  construction 
and  as  to  the  limitations  of  the  right  of  one  person  to  manufac- 
ture an  article  similar  to  that  of  another.  The  plaintiff  made  a 
bulb  syringe  to  use  as  a  douche,  by  means  of  a  whirling  spray 
discharge,  under  name  "WhirHng  Spray."  Defendant  made 
one  like  it,  under  name  of  ''Whirl  Spray."  Defendant's  spray 
was  made  "^in  the  form  it  must  be  made  in  order  to  accomplish 
its  purpose,  and,  if  the  making  in  that  form  is  any  representation 
that  the  thing  made  came  from  the  plaintiff,  it  is  because  of  the 
extent  to  which  the  plaintiff  had  made  and  displayed  and  sold 
it  before  the  defendants  began."  "Unfair  competition,"  says 
this  court,  "is  not  established  by  proof  of  similarity  in  form, 
dimensions,  or  general  appearance  alone.  Where  such  similarity 
consists  in  constructions  common  to  or  characteristic  of  the 
articles  in  question,  and  especially  where  it  appears  to  result 
from  an  effort  to  comply  with  the  physical  requirements  essential 
to  commercial  success,  and  not  to  be  designed  to  misrepresent 
the  origin  of  such  articles,  the  doctrine  of  unfair  competition 
cannot  be  successfully  invoked  to  abridge  the  freedom  of  trade 
competition."  ^^ 

346-1905   (C.   C.  A.   3d  Cir.   at  p.  "A.  C.  Pads,"  and  the  business  had 

347).  originally    been    conducted    by    the 

'*  133  Fed.  160-1904  (C.  C.  A.  2d  "Air  Cushion  Rubber  Pad  Co."    De- 

Cir.).  fendant- made  rubber  hoof  pads  very 

"  Citing    Enterprise    Mfg.    Co.    v.  similar  in  appearance,  stamping  them  , 

Landers,   131   Fed.  240-1904   (C.   C.  "Air   Cushion,"    and    "A.    C.    Con- 

A.    2d   Cir.);   Revere  Rubber  Co.   v.  solidated  Hoof  Pad  Co.,"  and  regis- 

Consolidated  Hoof  Pad  Co.,  139  Fed.  tered  "A.  C."  as  a  trade-mark.    Held, 

151-1905  (C.  C.  S.  D.  N.  Y.).    Com-  that  defendant  was  guilty  of  unfair 

plainant's    rubber    hoof    pads    were  competition, 

known  as  "Air  Cushion  Pads"  and  Weingarten    v.    Charles    Bayer    & 


90 


Trade  Names  —  General  Principles 


Although  such  names  cannot  be  appropriated  by  one  person, 
they  may  nevertheless  be  fraudulently  used;  consequently  their 
use  is  regulated  and  sometimes  enjoined  by  equity,  just  as  in 
the  case  of  geographic  or  family  names.  See  chapter  on  "Simula- 
tion of  Articles  Themselves." 

§  51.  Unfamiliar  or  Scientific  Words  Used  as  Names  of 
Goods.  —  A  name  taken  from  a  foreign  language,  may  be  descrip- 
tive to  a  person  who  is  an  expert  linguist,  or  if  the  name  be  made 
up  from  chemical  or  other  scientific  terms,  to  one  who  is  a  trained 
scientist.  To  the  public,  such  words  are  usually  unintelligible 
and  entirely  nondescriptive,  and  appear  to  be  artificial  words. 
For  instance,  the  names  "  Pepto-Mangan "  and  "Pepto-Man- 
ganate  of  Iron  and  Cascara"  would  not  convey  very  different 
impressions  to  an  unlearned  man,  while  to  a  chemist  they  might 
convey  very  different  meanings.  On  that  ground  they  have  been 
held  arbitrary  and  fanciful  names.  ^"^ 


Co.,  22  R.  P.  C.  341  (H.  L.  1905). 
Plaintiffs,  an  American  firm,  early 
in  1902  began  to  advertise  and  sell 
in  England  an  improved  form  of 
what  were  known  as  "straight- 
fronted"  corsets.  Plaintiffs  used  the 
words  "Erect  Form."  Defendants, 
English  manufacturers,  a  few  months 
later,  began  to  sell  corsets  of  precisely 
the  same  kind  under  the  name  "Erect 
Form."  Held,  that  defendants  were 
entitled  to  use  the  words  "Erect 
Form,"  since  they  had  not  yet  ac- 
quired a  secondary  meaning,  but  not 
to  use  the  pecuhar  scroll  or  manner  of 
printing.  Plaintiffs  held  entitled  to 
that  extent  to  an  injunction  and  ac- 
count of  profits. 

Parsons  Bros.  &  Co.  v.  Gillespie  i& 
Co.,  15  R.  P.  C.  57-1897.  Plaintiffs, 
from  1890,  sold  "Flaked  Oatmeal." 
Defendants  began  in  1894  to  sell 
"Gillespie's  Flaked  Oatmeal."  Their 
packages  differed  entirely  in  get-up 
from  plaintiffs'.  Held,  that  "Flaked 
Oatmeal"  were  descriptive  words,  and 
not  an  artificial  term,  and  that  de- 
fendants were  at  liberty  to  use  them, 


at  least  where  their  packages  and 
labels  in  no  respect  resembled  plain- 
tiffs'. 

'^  M.  J.  Breitenbach  Co.  v.  Span- 
genberg,  131  Fed.  160-1904  (C.  C.  S. 
D.  N.  Y.),  Holt,  District  Judge:  "I 
do  not  think  that  the  name  'Pepto- 
Mangan'  is  simply  descriptive,  within 
the  meaning  of  that  term  in  the  law 
of  trade-marks.  It  seems,  if  analyzed 
by  a  person  familiar  with  the  Greek 
and  German  languages,  somewhat 
descriptive,  but  I  think  it  would 
seem  to  the  general  public  to  be  an 
artificial  and  manufactured  word. 
The  complaint  alleges  that  the  in- 
ventor '  adopted  the  arbitrary  and 
fanciful  words  "  Pepto-Mangan  "  as 
the  trade-mark  and  trade  name'  by 
which  to  designate  his  preparation, 
and  the  demurrer  formally  admits 
this  allegation.  Evidence  possibly 
might  lead  to  a  different  conclusion, 
but  on  this  demurrer  I  think  it  clear 
that  the  court  cannot  assume  that 
the  term  'Pepto-Mangan'  is  purely 
descriptive,  but  must  assume  that  it 
is   an  arbitrary   and   fanciful   trade- 


Artificial  or  Made-up  Words 


91 


No  rule  can  be  laid  down  which  will  create  a  definite  line 
of  cleavage  in  these  cases.  "  Pepto-Mangan "  and  ''Pepto- 
Manganate  of  Iron  and  Cascara"  are  held  to  be  infringing  names, 
although  both  may  accurately  describe  the  article  to  which  they 
are  offered;  while  "Cotosuet"  is  held  not  to  infringe  ''Cottolene," 
because  ''only  a  person  of  more  than  average  heedlessness  and 
carelessness  would  mistake  one  for  the  other."  ^^ 

§  52.  Artificial  or  Made-up  Words.  —  Many  of  the  names 
applied  to  goods  are  artificial,  "made-up"  names,  and  such 
names  are  the  sole  property  of  him  who  makes  them  up  and  uses 
them  on  his  goods.  Practically  all  such  names  may  be  registered 
as  technical  trade-marks.  At  first  thought,  it  would  seem  that 
the  owner's  right  in  such  names  must  be  so  clear  that  unlawful 
use  of  the  name  would  be  rare.    This  is  far  from  the  fact.    Fre- 


mark.  That  being  so,  it  is  not  at 
all  clear,  under  the  authorities,  that 
the  defendants  did  not  infringe  the 
rights  of  the  complainant  when  they 
adopted  as  the  name  of  their  prepa- 
ration '  Pepto-Manganate  of  Iron 
and  Cascara.'  Moreover,  the  com- 
plaint alleges  that  the  defendants 
have  substituted  their  tablets,  and 
supplied  them  to  customers  who  have 
asked  at  their  store  for  the  com- 
plainant's '  Pepto-Mangan.'  This  al- 
legation is  formally  admitted  by  the 
demurrer  and  constitutes  a  legal 
cause  of  action,  which,  if  supported 
by  evidence,  would  authorize  a  re- 
covery" (at  p.  160). 

"  N.  K.  Fairbank  Co.  v.  Swift  & 
Co.,  64  111.  App.  477-92-1896.  The 
plaintiff  made  "Cottolene,"  defend- 
ants made  "Cotosuet."  Held,  that 
cottolene  indicates  an  article  derived 
from  the  cotton  plant,  while  cotosuet 
indicates  a  substance  derived  from 
the  cotton  plarlt  and  from  suet,  and 
that  an  ordinarily  inteUigent  person 
would  not  be  deceived.  *  *  *  "We 
can  well  understand  that  a  person  who 
desired  to  obtain,  for  cooking  pur- 
poses, a  vegetable  shortening,  might 


easily  be  induced  by  a  grocer  to  ac- 
cept 'cotosuet,'  'cookene,'  'golden 
suet,'  'suetene,'  'cornene,'  'clare- 
lene,'  'golden  shortening,'  or  'su- 
preme shortening,'  names  applied 
by  other  manufacturers  to  their  re- 
spective products  of  similar  articles 
to  '  cottolene,'  although  such  pur- 
chaser had  distinctly  asked  for  '  cot- 
tolene.' It  is  well  known  that  retail 
vendors  can,  to  the  ordinary  pur- 
chaser, sell  several  similar  articles  that 
which  they,  as  such  vendors,  en- 
deavor to  dispose  of,  and  that  if  the 
articles  are  substantially  alike  the 
seller  will  hear  no  'kicking'  as,  in 
the  present  case  one  witness  testi- 
fied he  heard  none  when  he  gave 
*  cotosuet'  to  people  who  inquired 
for  *  cottolene.'  There  are  doubtless 
in  this  country  millions  of  people  to 
whom,  if  Seipp's  beer  were  given 
when  they  called  for  Blatz's  or  vice 
versa,  would  make  no  complaint. 
"To  a  person  of  ordinary  observa- 
tion and  attention,  the  distinction 
between  'cottolene'  and  'cotosuet'  is 
obvious.  Only  a  person  of  more  than 
average  heedlessness  and  carelessness 
would  mistake  one  for  the  other." 


92 


Trade  Names  —  General  Principles 


quently  the  name  is  taken  bodily  by  competitors  with  no  pretense 
at  varying  it,  while  at  other  times  it  is  used  in  some  modified  form. 
As  most  of  these  names  are  technical  trade-marks,  the  question  of 
secondary  meaning  is  seldom  involved,  the  issue  being  merely 
whether  or  not  the  defendant's  mark  is  a  colorable  imitation  of 
that  of  plaintiff.  Usually  deliberate  use  of  an  artificial  name, 
although  no  attempt  has  ever  been  made  to  register  it  as  a  trade- 
mark will  be  enjoined  and  penalized,  as  for  instance,  "Char- 
ter Oak  Stoves,"  "She  Cigars,"  "Club  Soda,"  "Elastic  Seam" 
underwear.  ^^    The  rule  here  stated  does  not  apply  to  cases  where 


'"Fi'/fey  V.  Fassett,  44  Mo.  168- 
1SG9.  "The  defendants  accumulated 
in  the  St.  Louis  market  a  quantity  of 
stoves  (not  made  by  plaintiff)  with 
the  name  'Charter  Oak'  upon  them, 
which  tliey  held  for  sale  as  'Charter 
Oak  Stoves.'  They  were  aware  of 
the  plaintiff's  proprietorship  of  the 
'Charter  Oak'  trade-mark,  and  were 
proceeding  to  sell  in  defiance  of  the 
plaintiff's  rights."  Plaintiff  had  been 
the  first  to  use  "Charter  Oak"  as  a 
name  of  stove  and  had  used  it  for  a 
long  time  when  this  suit  was  begun. 
The  mark  was  not  registered.  Injunc- 
tion granted. 

J.  A.  Scriven  Co.  v.  Girard  Co.,  140 
Fed.  794-1905  (C.  C.  S.  D.  N.  Y.). 
Lacombe,  J.:  Preliminary  injunction 
granted  against  use  of  words  "Elastic 
Seam"  or  "Stretchiseam,"  or  similar 
words,  in  connection  with  a  longitu- 
dinal yellow  strip  inserted  in  the  gar- 
ments. The  operation  of  injunction 
was  suspended  thirty  days,  to  allow 
changes  to  be  made  in  stock  on  hand 
etc. 

Paine  &  Co.  v.  Daniells  &  Sons' 
Brcivenes,  Ltd.,  10  R.  P.  C.  71-1893. 
It  was  sought  to  restrain  defendant 
from  selling  "John  Bull  Beer,"  plain- 
tiff having  applied  this  name  to  its 
beer  for  some  time.  It  was  not  consid- 
ered that  the  term  "John  Bull"  in 
such  a  connection  was  descriptive  or 


publici  juris,  or  that  the  exclusive 
right  to  use  it  might  not  be  acquired. 
It  was,  however,  held,  that  in  this  case 
sufficient  independent  use  of  the 
term  had  been  made  by  other  par- 
ties, though  in  a  different  territory, 
to  defeat  plaintiff's  claim  to  an  ex- 
clusive right. 

Sartor  v.  Schaden,  125  Iowa,  696- 
1904;  101  N.  W.  511.  Plaintiff  in 
1894  began  to  apply  to  the  boxes 
containing  cigars  made  by  him  a 
stock  label  bearing  the  word  "She," 
and  continued  to  use  the  word  as 
a  kind  of  trade-mark  or  trade  name, 
building  up  a  considerable  business. 
In  1899,  he  caused  the  word  to  be 
registered  as  a  trade-mark.  The 
labels  were  made  by  a  New  York 
printer,  and  were  used  by  others  be- 
sides plaintiff,  being  in  some  cases 
applied  to  cigar-boxes  outside  of  the 
plaintiff's  territory,  and  in  the  same 
state,  though  not  with  his  knowledge. 
In  1902,  defendant  began  to  use  a 
similar  label,  with  the  word  "She," 
for  cigars  manufactured  by  him,  and 
it  was  shown  that  many  purchasers 
were  misled  as  to  their  origin,  suppos- 
ing them  to  be  plaintiff's.  Held,  that 
defendant  was  guilty  of  unfair  compe- 
tition and  should  be  enjoined  from 
labeling  his  cigars  with  the  word 
"She." 

Cochrane  v.  MacNish  &  Son,  App. 


Names  Appealing  to  the  Eye  as  Similar  93 

the  name  in  question  can  be  rightfully  applied  to  the  goods  of 
anyone  other  than  complainant.^^ 

§  53.  Names  Appealing  to  the  Eye  as  Similar.  —  Merchants 

frequently  attempt  to  imitate  the  name  of  a  successful  com- 
petitor's house  or  company  or  brand  of  goods  just  closely 
enough  to  get  a  name  for  themselves  which,  while  different  in 
various  particulars,  will  sound  or  appear  to  those  not  familiar 
with  both  as  the  name  of  their  competitor  and  cause  their  house 
or  their  goods  to  be  mistaken  for  that  of  their  competitors.  Some- 
times this  is  accomplished  by  names  combined  with  labels  both 
differing  in  details,  but  bearing  the  same  salient  or  catch  features, 
so  that  a  casual  examination  will  detect  no  particular  differences. 
Again,  it  is  accomplished  by  names  which  are  so  framed  that 
while  they  are  quite  different  in  appearance,  yet  when  spoken,  the 
sound  of  them  is  very  similar.  Such  names  are  characterized  as  ^ 
idem  sonans.  The  average  retail  buyer  is  careless  as  to  details. 
He  knows  that  "Honeymoon"  Whiskey  is  good,  —  at  least  he 
recalls  that  a  whiskey  he  knows  to  be  good  has  a  name  very  like 
that.  Perhaps  he  has  not  purchased  it  in  a  long  time.  He  is 
shown  "Honey-Comb"  Whiskey  and  is  quite  satisfied.     The 

Cas.  225-1896.  Cantrell  and  Coch-  other  and  noncompetitive  rubber 
rane  first  made  "Club  Soda"  and  goods,  from  using  the  name  "Eureka" 
long  after  defendants  put  on  the  in  connection  with  its  hose,  even 
market  a  brand  of  soda  by  same  though  that  name  was  joined  with  an- 
name.  The  court  held  that  although  other  word  (such  as  "Acme,"  etc.),  and 
no  one  could  mistake  MacNish's  also  from  using  that  word  in  its  cor- 
soda  for  that  of  complainant,  and  porate  title,  so  long  as  it  should  make 
no  one  in  trade  would  be  likely  to  or  sell  goods  in  competition  with  com- 
be deceived,  consumers  would  not  no-  plainant's. 

tice  the  difference  and  would  be  de-  '^  Magnolia  Metal  Co.  v.  Tandem 
ceived.  Smelting  Syndicate,  Ltd.,  15  R.  P. 
Eureka  Fire  Hose  Co.  v.  Eureka  C.  701-1898.  Plaintiffs  manufac- 
Rubber  Mfg.  Co.,  69  N.  J.  Eq.  159-  tured  a  variety  of  anti-friction  metal 
1905;  60  Atl.  561;  affirmed  on  ap-  to  which  they  gave  the  fancy  name 
peal  on  opinion  below;  modification  "MagnoHa  Anti-friction  Metal."  De- 
refused;  s.  c.  65  Atl.  870-1907.  Com-  fendants,  however,  were  permitted  to 
plainant  manufactured  principally  fire  apply  the  same  name,  "Magnoha,"  to 
and  other  hose,  and  it  was  well  known  their  similar  metal,  as  it  did  not  ap- 
by  the  trade  name  "Eureka,"  some  of  pear  that  "Magnoha"  meant  only  the 
the  goods  having  also  a  subsidiary  manufacture  of  the  plaintiff,  nor  that 
name  in  connection  with  this.  Held,  defendants  used  the  name  to  pass  off 
that  it  was  entitled  to  enjoin  defend-  their  goods  as  those  manufactured  by 
ant,  a  manufacturer  of  hose  and  also  of  plaintiff. 


94  Trade  Names  —  General  Principles 

principal  features  of  an  article  he  has  used  before  and  found  satis- 
factory are  all  that  he  remembers.  The  value  of  the  average 
trade-mark,  then,  is  not  in  its  details  but  rather  in  its  salient  fea- 
tures, —  the  things  about  it  the  average  buyer  remembers.  It 
is  this  possibility  of  easily  misleading  purchasers  that  causes  the 
courts  to  be  astute  and  zealous  in  condemning  all  spurious  labels 
and  names  of  goods,  and  especially  those  which  are  not  identical 
but  arc  similar. 

Where  one  dealer  used  the  name  ''West  End  Distillery  Co." 
and  "Ky.'s  Criterion"  and  "Honeymoon,"  and  another  adopted 
the  name  "East  End  Distillery  Co."  and  "Ky.'s  Credential" 
and  "Honey-Comb"  it  was  held  fraudulent.  The  use  of  defend- 
ant's names  was  lawful,  but  the  use  by  him  of  the  name  "East 
End  Distillery  Co."  though  in  itself  probably  legitimate,  was, 
in  connection  with  the  use  of  the  brands  just  mentioned,  'prima 
facie  evidence  of  intentional  simulation. "° 

In  Pierce  v.  Guittard,'^^  the  plaintiff  for  thirteen  years  made 
"German  Sweet  Chocolate,"  the  name  German  being  that  of 
Samuel  German  who  was  employed  before  1867  by  plaintiff, 
and  who  in  1867  duly  assigned  to  plaintiff  the  exclusive  right 
to  use  his  name  on  the  chocolate.  Defendant  made  chocolate 
which  he  called  "Sweet  German  Chocolate."  The  court  con- 
sidered that  the  defendant's  acts  constituted  fraud  upon  the 
public,  and  on  the  authority  of  Lee  v.  Haley,"  and  McLean  v. 
Fleming,-^  ordered  a  new  trial,  injunction  having  been  denied 
below. 

Contrast  with  the  above  the  following  case  as  showing  how 
close  the  distinction  is  between  similar  and  dissimilar  names. 
In  Wells  V.  Ceylon  Perfume  Co.,'^^  plaintiff  was  the  proprietor 
of  "Rough  on  Rats,"  a  yellowish  brown  poisonous  powder, 
sold  in  boxes,  for  killing  vermin,  including  mosquitoes.  He  also 
had  a  trade-mark  for  the  words  "Rough  on  Rats"  as  applied  to 
vermin  exterminators,  but  had  never  used  the  words  "Rough  on 
Mosquitoes"  or  "Rough  on  Skeeters."  Defendant  put  up  and 
sold,  under  the  name  "Rough  on  Skeeters,"  an  orange-colored 
liquid  in  bottles,  having  an  odor  obnoxious  to  mosquitoes.     Held, 

^0  Kentucky  Dislilleries  &  Warehome  "  l.  R.  5  Ch.  App.  Cas.  155-1869. 

Co.   V.    Wathen,    110   Fed.   641-1901  "  96  U.  S.  245-1877;  24  L.  ed.  828. 

(C.  C.  Ky.).  ^*  105  Fed.  621-1900  (C.  C.  S.  D. 

2'  68  Cal.  68-1885;  8  Pac.  645.  N.  Y.). 


Names  Idem  Sonans  95 

that  defendant's  preparation  could  not  be  mistaken  for  anything 
that  plaintiff  offered,  and  that  there  was  no  unfair  competition. 

Plaintiff  used  name,  "Dr.  Morse's  Compound  Syrup  of  Yel- 
low Dock  Root."  Later  the  defendants  began  to  use  for  their 
product  the  name,  "Dr.  Morse's  Improved  Yellow  Dock  and 
Sarsaparilla  Compound."  This  difference  was  held  not  suffi- 
cient to  be  of  any  avail. ^^    See  chapter  on  ''Evidence." 

§  64.  Names  Idem  Sonans.  —  The  circuit  court  in  N.  K. 
Fairhank  Co.  v.  Luckel,  King  and  Cake  Soap  Co.,"^^  says  that  while 
a  trade-mark  appeals  to  the  eye  a  trade  name  appeals  to  the  ear. 
It  is,  therefore,  natural  that  the  unscrupulous  competitor  of  the 
makers  of  ''Insectine"  should  name  his  product  "Instantine." 
Here  again  no  rules  can  be  laid  down,  as  is  seen  by  a  comparison 
of  this  case  and  the  following  one,  where  plaintiff  manufactured 
a  remedy  for  the  tobacco  habit  in  the  form  of  tablets  and  called 
it  "No-To-Bac."  Defendant  manufactured  a  remedy  for  the 
same  habit  also  in  tablet  form,  to  which  it  gave  the  name  ''Baco- 
Curo."  There  were  marked  differences,  in  color  and  otherwise, 
between  the  tablets  and  boxes  of  defendant  and  those  of  plaintiff, 
and  it  was  held  there  was  no  unfair  competition. ^^  If  in  this  case 
there  had  been  any  other  features  which  might  have  rendered  the 
"Baco-Curo"  likely  to  be  mistaken  for  the  plaintiff's  article  it 
would  seem  that  the  injunction  might  have  been  granted. 

When  a  competitor  of  "Stephens'  Blue  Black"  ink  put  out 
''Steelpens  Blue  Black"  ink,  he  made  use  of  an  idem  sonans.^^ 

^^  Alexander  Bros.  v.  Morse^  14  R.  I.  were    accompanied    by    entirely    dif- 

153-60-1884.  ferent  designs. 

^^N.   K.   Fairhank   Co.   v.    Luckel  Mrs.  G.  B.  Miller  &  Co.  Tobacco 

K.  &  C.  Co.,  102  Fed.  327;  106  Fed.  Manufactory  v.  Commerce,  45  N.  J.  L. 

498-1901  (Cir.  Ct.  Oregon).  18-1883.     Plaintiffs   made  and   sold 

^''Sterling   Remedy   Co.    v.    Eureka  smoking    tobacco    wrapped    in    blue 

Chemical  &  Mfg.  Co.,  70  Fed.  704-  wrappers  with  the  words  "Mrs.  G.  B. 

1895  (C.  C.  W.  D.  Wis.).  Miller  &  Co.'s  Best  Smoking  Tobacco, 

^^  Stephens  v.  Peel,  16  L.  T.  N.  S.  97    Columbia    Street,    New    York," 

145-1867.    Stephens'  Blue  Black  Ink  printed  upon  it.     The  defendant  put 

held    infringed    by    Steelpens'    Blue  on  the  market   smoking   tobacco  of 

Black.     Cahn  v.  Gottschalk,  14  Daly  the  same  shape,  color,  size  and  appear- 

(N.  Y.),  542-1888;   2   N.  Y.  Supp.  ance,  with  the  words  "Mrs.  C.  B.  Mul- 

13.    "Maryland  Club  Rye  Whiskey"  ler  &  Co.,  Best   Smoking  Tobacco, 

held  infringed  by  "Maryland  Jockey  4373^    Grove    Street,  Jersey    City." 

Club    Rye   Whiskey,"   although   the  Held  fraudulent, 

words  as  branded  upon  the  barrels  Sperry  &  Co.  v.  Percival  Milling 


9()  Trade  Names  —  General  Principles 

In  Regis  v.  Jaynes  &  Co.,^^  the  plaintiff  who  applied  the  word 
"Rex"  as  a  trade-mark  or  trade  name,  to  dyspepsia  tablets 
made  by  her,  was  held  entitled  to  restrain  the  defendant  from 
using  the  word  "Rexall"  in  connection  with  similar  tablets,  al- 
though defendant  began  the  use  of  the  word  without  any  intention 
to  simulate.  The  same  also  is  true  of  the  case  Noel  v.  Ellis, ^^ 
where  complainant  sold  a  medicine  under  the  name  of  "Vitae- 
Ore."  Defendant,  an  agent  of  the  plaintiff,  began  to  sell  a  similar 
preparation  of  his  own,  under  the  name  "Vitalizing  Ore,"  and  the 
dress  of  his  packages  in  many  ways  resembled  that  of  com- 
plainant's. Held  unfair  competition.  The  use  of  the  name 
"Foresight  Waist  Company,  Home  of  Fashion,"  for  a  store 
placed  directly  opposite  that  of  "Forsythe"  a  well-known  maker 
of  waists,  was  held  unfair.  ^^ 

One  purpose  in  the  adoption  of  a  name  which  is  so  similar  in 
sound  to  that  of  a  rival  as  to  cause  one  to  be  taken  for  the  other 
is  to  cause  purchasers  to  buy  by  ear,  not  by  eye;  to  neglect  the 
label  and  depend  on  the  name. 

The  name  "Gold  Drop"  was  applied  by  defendant  to  a  wash- 
ing powder,  competing  with  "Gold  Dust,"  a  similar  article  made 
by  complainant  and  widely  advertised  and  known.  Different 
styles  of  labels  and  packages  were  used.  Fraud  resulted  despite 
this,  from  the  resemblance,  in  sound,  of  the  names.  "The  trade 
name  differs  from  the  trade-mark  in  this,"  said  the  court,  "that 
one  appeals  to  the  ear  more  than  to  the  eye.  The  advertisements 
of  the  name  were  for  the  purpose  of  having  the  intended  pur- 
chaser ask  for  'Gold  Dust'  without  his  having  any  knowledge  of 
the  character  of  the  label  on  the  package  he  was  to  receive,  and 
in  this  sense  the  fact  that  the  infringer  of  the  name  used  different 
devices  and  symbols  would  have  no  great  force."  ^^ 

Complainants  adopted  "Sorosis"  as  a  trade-mark  for  a  women's 
shoe  manufactured  by  them.  After  the  shoe  had  become  known 
and  popular,  defendants,  shoe  manufacturers  of  the  same  city, 

Co.,  81  Cal.  252-1889;  22  Pac.  651.  '°  Noel  v.  Ellis,  89  Fed.  978-1896 

"Germea,"  as  applied  to  a  meal  or  (C.  C.  S.  D.  Iowa), 

cereal,    held    infringed    by    "Golden,  ^^ Forsythe   v.    Guzy,    N.    Y.    Sup. 

Eagle  Germ,"  used  in  connection  with  Ct.,  O'Gorman,  J.,  Nov.  26,  1907. 

very  similar  labels.  '^  A^.   K.   Fairhank   Co.   v.   Luckel 

"185  Mass.   458-1904;  70  N.   E.  King   &   Cake   Soap   Co.,    102   Fed. 

480.  327-1900  (C.  C.  A.  9th  Cir.). 


Names  Idem  Sonans  97 

began  to  use  the  name  "Sartoris,"  changed  later  to  **Sartoria" 
and  "Satoria,"  for  a  women's  shoe  of  their  make,  very  similar  in 
appearance  to  complainants'  but  inferior  in  quahty  to  "Sorosis" 
shoes.  Such  action  constituted  unfair  competition,  the  similarity 
in  names  and  in  appearance  together  rendering  it  very  probable 
that  retail  dealers  would  deceive  purchasers  into  buying  defend- 
ants' shoes  as  and  for  complainants'.^^ 

A  medical  company  had  built  up  a  large  sale  of  laxative  tab- 
lets called  ''Iron-Ox  Tablets,"  but  not  containing  oxide  of  iron. 
A  rival  then  began  to  put  on  the  market  ''Compound  Iron  Oxide 
Tablets,"  containing  besides  certain  useful  drugs,  some  iron  oxide, 
a  practically  useless  ingredient,  being  one  of  the  least  soluble 
forms  of  iron.  There  was  no  similarity  in  the  dress  of  the  two 
packages.  Held,  that  defendants  should  be  enjoined  from  using 
the  words  "Iron  Oxide"  without  clearly  distinguishing  their 
goods.^* 

"Steinway"  pianos  have  been  long  known  as  of  high  grade. 
One  Henshaw,  a  competitor,  used  on  cheaper  pianos  the  name 
"Steinberg  Pianos."  No  sufficient  explanation  was  given  of 
the  adoption  of  this  name,  and  he  was  using  the  name  as  a  trade- 
mark in  connection  with  a  device  on  his  goods  bearing  a  general 
resemblance  to  that  used  by  the  makers  of  Steinway  pianos.  An 
injunction  was  issued.  The  court  thought  defendant's  combina- 
tion calculated  to  deceive,  "None  the  less  that  pianos  sold  by  the 
defendant  are  very  much  cheaper  and  of  lower  quality  than  those 
sold  by  the  plaintiffs."  ^^ 

"  Little  V.  Kellam,  100  Fed.  353-  Stuart  v.  Stewart,  91  Fed.  243  (C. 

1900   (C.   C.   N.   D.   N.  Y.);   Inter-  C.    A.).      Plaintiff    put    on    market 

national   Plasmon   Ltd.,   v.    Plasmon  "Stuart's  Dyspepsia  Tablets."     De- 

Ltd.,    22    R.    P.    C.    543-1905    (Ch.  fendant  later  began  to  sell  "Dr.  Stew- 

Div.).     Plaintiff    sold    various    food  art's  Dyspepsia  Tablets."    Held,  "It 

preparations  under  names  of  which  needs  no  argument  to  show  that  these 

the   word    "Plasmon"   formed   part,  names  are  idein  sonans,  and  that  to 

such    as    Plasmon    Cocoa,    Plasmon  use  both  of  them  in  connection  with 

Biscuits,    Beef    Plasmon,    etc.     De-  dyspepsia   tablets   must  cause   great 

fendants   began   to   sell   tablets   and  confusion  in  a  sale  and  great  wrong  to 

powder  for  making  a  beverage  which  purchasers." 

they    called    "  Plasmonade."      Held,  ^*  Iron-Ox  Remedy  Co.,  Ltd.,  y.  Co- 

that  defendants  should  be  enjoined  operative  Wholesale  Soc.,  Ltd.,  24  R.  P. 

from   selling   any   such   preparations  C.  425-1907  (Ch.  Div.,  Parker,  J.), 

under    any    name    of    which    "Plas-  ^'^  Steimcay  &  Sons  v.  Henshaw,  5 

mon"  formed  a  part.  R.  P.  C.  77-1887  (Ch.  Div.). 


98  Trade  Names  —  General  Principles 

Further  illustrations  of  such  approximations  of  rival  trade 
names  are  as  follows:  *' Grape-Nuts"  not  infringed  by  "Grain- 
Hearts  Food;"  ^^  "Chartreuse"  is  infringed  by  "Chasseurs;"  " 
"  Limette "  infringes " Lumetta;"  ^^  "Standard  Computing  Scales" 
does  not  infringe  "Standard  Scales;"  ^^  "The  Grocer"  infringes 
the  "American  Grocer;"  ^"  "The  Penny  Bell's  Life  and  Sporting 
News"  infringes  "Bell's  Life  in  London  and  Sporting  Chronicle;"^^ 
"Irving  Hotel"  infringes  "Irving  House; "^^  "Independent  Na- 
tional System  of  Penmanship"  infringes  "Payson,  Button  & 
Scribner's  National  System  of  Penmanship;"  ^^  "Liquor  Acidi 
Phosphorici"  does  not  infringe  "Hosford's  Acid  Phosphate;"  '*'* 
"Six  Big  Tailors"  infringes  "Six  Little  Tailors;"  ^^  "New  York 
Commercial"  does  not  infringe  the  "Commercial  Advertiser;"  ^^ 
"Cuticle"  soap  does  not  infringe  "Cuticura"  soap;  "  "Cas- 
torets"  infringes  "Cascarets."  ^^ 

In  Burnett  v.  Phalo7i,^^  the  two  words  were:  "Cocoaine"  and 
" Cocoine."  In  Rowley  v.  Houghton,^^  the  two  words  were  "Hero " 
and  "Heroine."  In  Wamsutta  Mills  v.  Allcn,^-''^  the  two  words 
were  "Wamsutta"  and  "Wamyesta."  In  Glen  Cove  Mfg.  Co.  v. 
Ludeling,^'^  the  words  were  "Maizena"  and  "Maizharina."  In 
Celluloid  Mfg.  Co.  v.  Cellonite  Mfg.  Co.,^^  the  two  words  were 
"Celluloid"  and  "Cellonite."  In  Enoch  Morgan's  Sons  Co.  v. 

'"  Postum   Cereal   Co.   v.   American  **  Rumford  Chemical  Works  v.  Muth, 

Health  Food  Co.,  56  C.  C.  A.  360-  1  L.  R.  A.  44-1888;  35  Fed.  524-1888. 

1902;  119  Fed.  848-1903.  *^  Mossier  v.  Jacobs,  66  111.  App. 

='.4.  Bauer  &  Co.  v.  Order  of  Car-  571-1896. 

thusian  Monks,  56  C.  C.  A.  485-1903;  *^  Commercial   Advertiser   Assn.    v. 

120  Fed.  78-1903.  Haynes,  26  App.  Div.  (N.  Y.)  27&- 

3s  Dreivry    &    Son    v.    Wood,    127  1898;  49  N.  Y.  Supp.  938. 

Fed.  887-1903  (C.  C.  Minn.).  ^^  Potter    Drug    &    Chemical    Corp. 

^^  Computing   Scale    Co.    v.    Stand-  v.  Pasfield  Soap  Co.,  102  Fed.  490- 

ard   Computigig  Scale   Co.,    118   Fed.  1900,  affirmed. 

965-1902;  55  C.  C.  A.  1^9.  *^  Sterling    Remedy    Co.    v.    Sper- 

*°  American   Grocer   Pub.   Assn.    v.  mine    Medical   Co.,    112   Fed.    1000- 

The  Grocer  Publishing  Co.,  25  Hun  1901   (C.  C.  A.  7th  Cir.);  106  Fed. 

(N.  Y.),  398-1881.  414-1901  (C.  C.  A.  2d  Cir.). 

^'  Clement  v.  Maddick,  5  Jur.  N.  S.  «  3  Keyes  (N.  Y.),  594-1867. 

592-1859.  60  2  Brewst.  (Pa.),  303-1868. 

''-Howard  v.   Henriques,   3   Sandf.  "Cox's   Manual,  660-1878   (Com. 

(N.  Y.)  725-1851.  PI.  Phila.). 

"Potter    V.    McPherson,    21    Hun  6=22  Fed.  823-1885  (C.  C.  S.  D. 

(N.  Y.),  559-1880.  N.  Y.). 

"  32  Fed.  94-1887. 


Foreign  Words  as  Names  of  Goods  99 

Edler,'"^  the  two  words  were  "Sapolio"  and  "Saponit."  In  Estes  v. 
Leslie,'-'^''  the  two  words  were  "Chatter-box  "  and  '*  Chatter-Book." 
An  injunction  was  issued  in  all  these  cases.  Further  illustrations 
of  names  alleged  to  be  similar  in  sound  are  found  in  the  note.^^ 

§  55.  Foreign  Words  as  Names  of  Goods.  —  If  the  general 
or  abstract  name  given  an  article  in  a  foreign  land,  in  the  language 
of  that  country  is  used  for  the  same  article  here,  it  is  equally  an 
abstract  name  and  a  descriptive  term,  and  may  be  used  by  all 
persons  here  just  as  it  may  be  used  by  all  persons  in  the  foreign 
country.  In  1869,  Selchow  introduced  in  the  United  States  a  game 
which  he  called  Parcheesi,  a  name  similar  to  the  name  given  it 
in  India.  Chaffee  used  the  name,  in  selling  the  same  game  here. 
Selchow  alleged  he  had  no  exclusive  right  to  the  game,  but  that 
he  had  exclusive  right  to  use  the  name.  Defendant  claimed  the 
word  is  the  Indian  name  of  the  game  and  hence  descriptive  and 
can  be  used  by  anyone.  Selchow  built  up  a  large  demand  for 
Parcheesi  and  the  name  became  widely  identified  with  the  game 
by  him.  "It  is  clear  to  this  court  that,  if  defendant  is  permitted 
to  make  and  sell  this  game  under  the  name  '  Parcheesi,'  they  will 
take  away  a  part,  if  not  a  large  part,  of  complainants'  business 

6^  Cox's  Manual,  714-1890.  864.  "Sunlight"  and  "American^ 
65  29  Fed.  91-1886  (C.  C.  S.  D.  Sunlight,"  88  Fed.  484.  "Royal" 
N.  Y.).  and  "Royal  London,"  76  Fed.  465. 
^^  Rowland  v.  Michcll,  14  R.  P.  C.  "Health  Food"  and  "Sanitarium 
37-1896  (reported  in  Ch.  Div.  13  R.  Health  Food,"  104  Fed.  141.  "Com- 
P.  C.  457).  Plaintiff  sold  "Row-  fort"  and  "Home  Comfort,"  127 
land's  Army  and  Navy  Paregoric  Fed.  962.  "Sanitas"  and  "Condi- 
Tablets,"  Defendant  enjoined  from  Sanitas,"  56  L.  T.  N.  S.  621.  "Port- 
selling  other  goods  as  "Army  and  land"  and  "Famous  Portland,"  52 
Navy  Paregoric  Tablets,"  with  wrap-  N.  J.  Eq.  380.  "Roy  Watch  Case 
pers  resembling  plaintiff's.  "Queen"  Company"  and  "Camm-Roy  Watch 
and  "Queen  Quahty,"  105  Fed.  375.  Case  Co.,"  58  N.  Y.  Supp.  979. 
"Congress"  and  "High  Rock  Con-  "Star"  and  "Lone  Star,"  51  Fed. 
gress,"  45  N.  Y.  291.  "Carlsbad  832.  "Cashmere"  and  "Violets  of 
Sprudel  Salt"  and  "Kutnow's  Im-  Cashmere,"  88  Fed.  899.  "Hohner" 
proved  Effervescent  Carlsbad,"  71  and  "Improved  Hohner,"  52  Fed. 
Fed.  167.  "Home"  and  "Home  871.  "Pride"  and  "Pride  of  Syra- 
Delight,"  59  Fed.  284.  "ApoUin-  cuse,"  82  N.  Y.  519.  "  German  House- 
aris"  and  "London  Appollinaris,"  hold  Dyes"  and  "Excellent  German 
33  L.  T.  N.  S.  242.  "Glenfield"  and  Household  Dyes,"  94  Wis.  583. 
"Royal  Palace  Glenfield,"  L.  R.  "Guinea  Coal  Company"  and  "Pall 
5  H.  L.  508.  "Budweiser"  and  Mall  Guinea  Coal  Company,"  L.  R. 
"Milwaukee    Budweiser,"    87    Fed.  5  Ch.  App.  Cas.  155-1869. 


100  Trade  Names  —  General  Principles 

to  their  great  damage.  That  they  intend  so  to  do  is  plain,  and 
they  use  the  word  Parcheesi,  not  because  it  is  the  Hindoostanee 
or  foreign  name  of  the  game,  for  they  are  compelled  to  concede 
it  is  not  (although  so  very  similar  as  before  stated),  but  because 
it  is  the  name  of  the  game  given  to  it  by  the  complainants,  whose 
enterprise  in  business  has  caused  it  to  become  under  that  name  a 
popular  game,  and  an  extensive  article  of  commerce,  from  the 
manufacture  and  sale  of  which,  under  that  name,  large  profits 
have  been  and  may  be  derived.  It  seems  plain  that  to  permit  the 
defendant  to  make  and  sell  this  article  under  the  name  'Par- 
cheesi' will  legahze  a  fraud  upon  complainants'  rights.  It  is 
not  intended  to  hold  that  defendant  may  not  use  the  Hin- 
doostanee name  of  this  game,  for  that  everyone  has  the  right 
to  do."  " 

Complainant  used  the  French  word  ''brassiere"  to  designate 
an  article  of  women's  wear  made  by  him  (a  combined  corset 
cover  and  bust  supporter),  calling  it  the  "De  Bevoise  Brassiere." 
Held,  that  the  word  was  descriptive  and  that  defendant  should 
not  be  enjoined  from  selling  a  similar  article  under  the  name 
"H.  &  W.  Brassiere."  '"^ 

§  56.  Abbreviation  of  Names  of  Goods  —  Nicknames.  — 
Nicknames  are  not  confined  to  persons.  Goods  have  nicknames; 
business  houses  have  them.  Oftentimes  they  are  just  as  valuable 
as  the  full  name  of  the  goods  or  the  formal  name  of  the  house, 
sometimes  more  valuable.  Business  firms  with  long,  cumbersome 
names,  often  become  known  among  their  neighbors  and  often 
to  the  public  that  patronize  them  merely  by  the  initials  of  the 
names  making  up  the  full  name  of  the  firm  or  company.  So  of 
names  of  commodities.  "S.  &  W."  revolvers  are  no  doubt  as 
well  known  to  the  shooting  public  as  "Smith  &  Wesson "  revolvers. 
Abbreviations  like  "B.  &  A.,"  ''B.  &  M.,"  "D.  L.  &  W.,"  are 
names  —  not  initials  merely,  —  and  the  right  to  use  them  is  valu- 
able. C.  G.  V.  and  F.  I.  A.  T.  are  names  of  importance  in  the 
automobile  world,  although  they  are  merely  the  initials  of  the 
men  or  the  firm  building  the  cars  bearing  the  names.  For  a  com- 
petitor to  advertise,  using  such  a  name,  which  is  a  nickname  of  a 
competitor,  may  well  cause  confusion  and  injury,  and  such  a  use 

"  Selchow    V.    Chaffee    &    Selchow  ^  Charles  R.  De  Bevoise  &  Co.  v. 

Mfg.  Co.,  132  Fed.  99&-99-1904  (C.      H.  &  W.  Co.,  69  N.  J.  Eq.  114-1905 
C.  S.  D.  N.  Y.).  (Pitney,  V.  C). 


Fraudulent  Use  of  Coincidences  in  Meaning       101 

is  actionable  under  the  rules  of  unfair  competition.  See  §  61. 
''It  would  be  mere  self-stultification  for  this  court  to  assume 
not  to  see  what  every  practical  person  of  intelligence  must  see 
*  *  *  that  the  phrases  'Le  Page's  Glue,'  and  'Glue  manu- 
factured by  Le  Page,'  *  *  *  mean  or  come  to  mean,  one  and 
the  same  thing,  and  that  both  will  inevitably  be  soon  styled  alike 
in  the  market."  -'^ 

There  are  certain  brands  which  have  more  than  one  name. 
The  brand  of  milk  sold  as  ''Milkmaid"  and  "Milkmaid  Brand" 
came  to  be  called  by  the  public  "Dairymaid"  and  "Dairymaid 
Brand,"  and  it  was  held  that  the  latter  names  were  trade  names 
denoting  the  plaintiffs'  goods.'^''  So  the  words  "Sportsman  Special 
Quality"  brandy  used  with  a  label  on  which  was  a  hunting  scene 
with  two  huntsmen.  This  brand  came  to  be  known  as  "Hunts- 
man Cherry  Brandy."  "^ 

§  57.  Fraudulent  Use  of  Coincidences  in  Meaning  of  Names. 
—  It  sometimes  happens  that  the  opportunity  is  offered  to  a 
competitor  to  take  advantage  of  a  coincidence  of  meaning  in  two 
names  to  his  profit  and  the  injury  of  his  rival.  For  instance,  in 
the  case  of  Pierce  v.  Guittard,^-  for  thirteen  years  Samuel  German 
made  "German Sweet  Chocolate."  Defendant  began  later  to  sell 
"Sweet  German  Chocolate."  Plaintiff  showed  that  defendant 
asked  what  name  the  plaintiff  used  for  their  chocolate  and  when  he 
learned  that  it  was  "German  Sweet  Chocolate"  said  that  he  would 
use  the  name  "Sweet  German  Chocolate."  The  court  held,  that 
on  such  a  state  of  facts  it  was  necessary  to  decide  nothing  farther 
than  that  fraud  existed.  When  plaintiff  had  established  a  busi- 
ness for  his  goods  and  was  carrying  it  on  under  a  particular  name, 
for  some  other  person  to  assume  the  same  name  with  slight  alter- 
tions,  in  such  a  way  as  to  induce  persons  to  deal  with  him  in  the 
belief  they  were  dealing  with  the  first-mentioned  person  was 
fraud.  This  was  a  deliberate  misuse  of  a  rival's  name,  taking 
advantage  of  its  double  meaning.  The  fact  that  a  name  already 
possesses  two  distinct  meanings  as  the  word  "German"  did  in 
this  case,  will  not  serve  as  a  protection  against  injunction  if  this 

*9  Le  Page   Co.   v.   Russia   Cement  "  Re  Barker  &  Son  Trade-Mark,  53 

Co.,  51  Fed.  941-1892  (C.  C.  A.  2d  L.  T.  N.  S.  23. 

Cir.);  17  L.  R.  A.  354.  ''^Pierce  v.   Guittard,  68  Cal.   68- 

<^o  Anglo-Swiss    Milk    Co.    v.    Met-  1885;  8  Pac.  645. 
calf,  3  R.  P.  C.  28. 


-J 


102  Trade  Names  —  General  Principles 

coincidence  is  used  as  an  agency  of  fraud.  Here  again  the  court 
will  consider  whether  or  not  the  defendant  was  under  any  neces- 
sity for  making  use  of  the  word  in  his  business,  whether  (to  use 
the  phrase  of  Justice  Holmes)  it  was  ''commercially  practicable" 
for  him  to  have  used  some  other  name. 

In  Godillot  v.  American  Grocery  Co.,^^  Alexis  Godillot  used  his 
initial  letters  "A.  G.,"  combined  in  a  monogram  for  many  years  on 
groceries  made  by  him  in  France,  and  sold  by  him  and  by  others, 
as  his  agents,  in  the  United  States.  In  1884,  he  sold  the  right  to 
use  the  mark  in  the  United  States  to  T.  W.  &  Co.  In  1894,  the 
T.-W.  Co.  resold  the  right  to  Godillot  and  later  the  T.-W.  Co. 
was  sold  to  the  American  Grocery  Company,  which  began  business 
at  the  former  stand  of  the  T.-W.  Co.,  and  began  to  use  a  mark 
consisting  of  the  letters  "A.  G.  Co."  in  a  monogram  similar  to 
Godillot's.  It  applied  this  name  to  different  articles,  and  claimed 
the  right  to  use  these  letters  without  restriction,  in  dealing  in 
groceries.  The  court  said  of  this  act:  "There  is  no  good  reason 
for  such  a  close  imitation  of  the  plaintiff's  trade-mark,  and  no 
justification  therefor." 

In  Plant  Seed  Co.  v.  Michel  Plant  and  Seed  Co.,^*  plaintiff  suc- 
ceeded "Plant  Brothers."  Both  parties  to  this  action  are  cor- 
porations. The  defendant's  predecessors  incorporated  under 
the  name  of  "H.  Michel  &  Company,"  and  later  changed  their 
name  to  "Michel  Plant  and  Seed  Company."  The  plaintiff 
alleges  that  this  name  was  a  scheme  of  piracy  against  the  plain- 
tiff's business  and  to  deceive  the  public  by  diverting  to  them- 
selves the  trade  of  the  plaintiff.  The  business  of  both  the  plaintiff 
and  defendant  was  the  sale  of  plants  and  seeds.  "The  word 
'  Plant '  is  one  of  very  common  use,  and  may  very  properly  be  used 
to  designate  a  business  and  the  fact  that  the  '  Plant  Family '  were 
the  founders  of  the  plaintiff's  business  and  its  principal  stock- 
holders affords  no  reason  why  the  defendant  could  not  use  the 
word  to  designate  its  business  provided  it  was  done  for  an  honest 
purpose;  and,  with  the  same  proviso  the  defendant  had  the  right 
to  adopt  its  present  corporate  name.  We  do  not  think  that  the 
resemljlance  between  the  two  corporate  names  is  sufficiently  close 
to  raise  a  probability  of  mistake  on  the  part  of  the  public,  or  to 
show  a  design  or  intention  on  the  part  of  the  defendant  to  de- 

"^  Godillot  V.  American  Grocerij  Co.,  «'  7  Mo.  App.  313-20-1889. 

71  Fed.  873-75-1896  (C.  C.  N.  J.). 


Numerals  and  Letters  as  Names  of  Goods        103 

ceive."  ^'^  *  *  ♦  "Under  such  circumstances  the  choice  of 
names  by  which  a  new  company  can  designate  its  business  so  as 
to  satisfy  the  requirements  of  law  and  at  the  same  time  avoid 
trouble  with  the  other  companies  is  very  Umited,  and  it  would 
not  be  wise  for  the  courts  to  adopt  too  stringent  rules  in  deter- 
mining controversies  like  the  one  under  consideration.  If  such  a 
case  is  free  from  actual  fraud,  it  is  better  for  the  courts  to  per- 
mit some  confusion  and  friction  in  business  than  to  hamper  and 
discourage  trade  by  judicial  interference." 

§  58.  Numerals  and  Letters  as  Names  of  Goods.  —  Numerals 
and  letters  are  free  to  the  use  of  all,  yet  the  law  of  unfair 
competition  forbids  their  use  to  the  detriment  and  loss  of  others. 
If  they  are  used  by  a  defendant  on  his  goods  in  evident  imitation 
of  numerals  or  letters  adopted  by  another  to  distinguish  his  goods, 
thus  disguising  the  defendant's  own  goods  and  inducing  the 
public  to  believe  that  they  are  the  goods  of  the  plaintiff,  it  is 
unfair.  Such  a  use  of  letters  is  well  illustrated  by  Birmingham 
Small  Arms  Co.,  Ltd.,  v.  Webh  &  Co.^^  Plaintiffs  made,  among 
other  things,  cycle  accessories,  including  spanners.  They  stamped 
most  of  their  goods  with  the  initials  of  their  name,  "B.  S.  A.," 
and  these  letters  had  become  associated  with  the  plaintiffs  in 
the  public  mind.  Their  spanners  bore  a  certain  trade-mark  in 
addition  to  these  letters.  Defendants  began  to  sell  spanners 
bearing  the  letters  ''B.  A.  S."  which,  it  was  claimed,  stood  for 
"Best  All-round  Spanners."  Held,  that  defendants  should  be 
enjoined  from  using  these  letters,  even  though  there  was  originally 
no  intention  to  deceive  on  defendant's  part. 

§  59.  Numerals  and  Letters  Used  to  Designate  Grade  of 
Goods.  —  The  United  States  Supreme  Court  holds  as  to  the 
right  to  the  exclusive  use  of  letters  and  numerals  that:  "Letters 
or  figures  which,  by  the  custom  of  traders  or  the  declaration  of 

^''  Citing    McCartney    v.    Garnhart,  trade-mark  the  initials   T.  O.  C.  & 

45  Mo.  593-1870.  L.  Co.,  with  "Superior"  above  and 

«8  24  R.  P.  C.  27-1906  (Ch.  Div.);  "Quahty"    below,    the   whole    being 

Standard  Table  Oil  Cloth  Co.  v.  Tren-  inclosed  in  an  ellipse  of  about  the 

ton  Oil  Cloth  &  Linoleum  Co.,  71  N.  J.  same  size  as  that  in   complainant's 

Eq.   555;   63   Atl.   846-1906.     Com-  mark.     Held,   that   while   defendant 

plainant  used   as   a   trade-mark   the  should  not  be  required  to  discontinue 

initials  oTc,  with  "Standard"  above  the  use  of  the  letters  T.  O.  C.  in  its 

and  "Company"  below,  all  inclosed  mark,  it  should  be  enjoined  from  using 

in  an  ellipse.     Defendant  used  as  a  the  ellipse  in  combination  with  them. 


104  Trade  Names  —  General  Principles 

the  manufacturer  of  the  goods  to  which  they  are  attached  are 
only  used  to  denote  quality,  are  incapable  of  exclusive  appropria- 
tion, but  are  open  to  use  by  anyone  like  the  adjectives  of  the 
language;"  ^^  but  in  Lawrence  Mfg.  Co.  v.  Tennessee  Mfg.  Co.,^^ 
Fuller,  C.  J.,  said,  after  citing  Witherspoon  v.  Currie  and  Thomp- 
son V.  Montgomery,  that  if  ''the  letters  'L.  L.'  formed  an  im- 
portant part  of  plaintiff's  label  and  the  defendant  had  used  them 
in  such  a  way  and  under  such  circumstances  as  to  amount  to  a 
false  representation  which  enabled  it  to  sell  and  it  did  sell  its 
goods  as  those  of  the  plaintiff  and  this  without  the  plaintiff's 
consent  or  acquiescence,  then  plaintiff  might  obtain  relief  within 
the  principle  of  the  cases  just  cited." 

Where  a  number  is  originally  used  by  a  manufacturer  to  desig- 
nate a  particular  kind  of  goods  as  distinguished  from  other  pat- 
terns or  kinds  made  by  him,  and  has  come  to  designate  in  the 
trade,  goods  of  like  kind  or  quality,  other  manufacturers  who 
make  such  goods  may  designate  them  by  that  number  without 
infringement.^' 

This  is  squarely  denied  by  the  Rhode  Island  court,  which 
holds  that  a  trader  may  not  denote  his  corresponding  styles  of 
goods  by  the  numbers  used  on  those  styles  by  his  competitor. 
In  American  Solid  Leather  Button  Co.  v.  Anthony, '^'^  the  complain- 
ant designated  the  different  styles  of  buttons  and  nails  made 
by  it  by  arbitrary  numerals,  such  as  ''30,"  "40,"  "111,"  etc.,  by 
which  these  different  styles  became  known  in  the  trade.  Held, 
that  the  defendants  had  no  right  to  designate  the  corresponding 
styles  of  their  own  similar  goods  by  the  same  numerals,  which 
the  court  deemed  to  denote  not  style  or  quality  alone,  but  origin 
as  well.  This  was  held  not  to  apply  to  certain  of  the  numerals, 
"60"  and  "70,"  which  had  previously  been  applied  to  the  same 
styles  by  another  manufacturer. 

"R.  12"  on  writing  paper  —  a  private  mark  for  office  conven- 
ience —  will  not  be  restrained  where  it  has  no  meaning  in  the 
stationery  trade.'' ^ 

Mr.  Ilesseltine  says^^  that  "words,  letters,  or  numbers  chosen 

"  Manufacturing    Co.    v.    Trainer,  '» 15  R.  I.  338-1886;  5  Atl.  62G. 

101  U.  S.  55;  25  L.  cd.  993.  "  Marcus  Ward  v.  Ward,  40  N.  Y. 

88  138  U.  S.   537-1891;  34  L.   ed.  St.  Rep.  792;  15  N.  Y.  Supp.  913. 

997;  11  Sup.  Ct.  396.  ""Digest  of  the  Law  of  Trade- 
s'Smi7/t  (fe  Dons  M/^.  Co.  v.  ^Swf//;,  marks   and   Unfair  Trade,"   Boston, 

89  Fed.  486-1898  (C.  C.  N.  D.  111.),  p.  153-1906. 


Numerals  Indicating  Source  or  Origin  105 

to  designate  the  grade  or  quality  of  the  product  of  a  manufac- 
turer, while  not  legal  trade-marks,  on  proof  of  use  with  fraudulent 
intent  on  the  part  of  another  will  be  protected  on  the  ground  of 
unfair  trade."  He  goes  on  to  mention  the  use  of  the  numeral 
"303"  by  Gillott  to  denote  a  pattern  of  pens  made  by  him,^^  and 
"H.  H."  and  size  "6"  used  by  a  plow  maker  on  plows.  Defend- 
ant used  "H.  H.  6"  and  was  enjoined.'^* 

Gillott  long  manufactured  steel  pens  of  a  peculiar  pattern,  and 
upon  both  the  pens  and  the  box  labels  were  stamped  the  figures 
"303"  and  the  words  "Joseph  Gillott,  extra  fine."  The  number 
"303"  was  not  used  to  denote  size  or  grade,  but  was  arbitrarily 
chosen  to  denote  the  make  or  pattern  of  the  pen,  and  dealers 
generally  designated  these  pens  as  "303"  pens.  Held,  that 
plaintiff  was  entitled  to  the  exclusive  use  of  these  figures  as  a 
trade-mark,  and  defendants  were  not  at  liberty  to  sell  pens 
of  the  same  design  as  plaintiff's,  put  up  in  similar  boxes  and 
similarly  stamped  except  that  defendant's  name  was  substi- 
tuted for  plaintiff's.^^  This  was  a  case  of  unfair  competition 
although  the  courts  and  bar  at  that  time  (1872)  did  not 
know  the  doctrines  of  the  law  of  unfair  competition  under  that 
name. 

§  60.  Numerals  Indicating  Source  or  Origin.  —  Numerals 
may  come  to  indicate  origin,  —  in  a  secondary  sense,  —  may 
come  to  mean  the  goods  of  the  plaintiff  when  used  as  a  part  of 
a  mark,  and  when  so  used  by  another  the  court  will  enjoin  the 
use  of  the  entire  mark,  figures  and  all. 

In  Lawrence  Mfg.  Co.  v.  Lowell  Hosiery  MillsJ^  the  plaintiff 
stamped  upon  its  hosiery  of  a  certain  grade  a  device  consisting 
of  an  eagle  surmounting  a  wreath  inclosing  its  name,  with  the 
figures  "523"  conspicuously  printed  below.  Defendant  for  the 
purpose  of  misleading  customers,  and,  as  the  court  found,  with 
that  actual  result,  stamped  its  hosiery  with  an  eagle  surmounting 
a  double  circle  or  garter,  with  the  figures  "523"  printed  below  in 
the  same  size  and  style  as  on  plaintiff's  mark.  Defendant  was 
entitled  to  use  the  eagle  and  double  circle,  having  adopted  them 
before  the  plaintiff  had  adopted  its  device.    Held,  that  the  nu- 

'^  Gillott  V.  Kettle,  3  Duer  (N.  Y.),  '^Gillott   v.    Esterbrook,   48   N.    Y. 

624.  374-1872. 

"  Ransome  v.  Bentall,  3  L.  J.  Ch.  '«  129  Mass.  325-1880. 
N.  S.  161. 


106  Trade  Names  —  General  Principles 

merals  indicated  origin  and  that  defendant  should  be  restrained 
from  continuing  their  use  as  part  of  his  mark. 

In  Shaw  Stocking  Co.  v.  Mack,''^  complainant  manufactured  at 
Lowell  hosiery  of  high  reputation  and  designated  one  style  by 
the  figures  "830."  The  label  bore  the  trade-mark  "Shawknit," 
in  script  with  a  flourish  and  the  words  "Seamless  Half  Hose," 
with  the  name  of  the  manufacturer  and  the  figures  "830."  De- 
fendants at  Albany  bought  large  quantities  of  complainant's 
goods  and  with  complainant's  consent,  in  effect,  held  themselves 
out  to  the  public  as  selling  agents  of  complainant.  They  then 
began  to  buy  of  a  Connecticut  manufacturer  goods  similar  to 
complainant's  "830"  style,  but  inferior,  and  sold  them  under  a 
label  generally  resembling  complainant's  in  appearance  and 
bearing  the  word  "Seamless"  in  script  of  similar  style,  including 
the  flourish,  followed  by  the  words  "Half  Hose,  Double  Heels," 
with  defendant's  name  and  address  and  the  figures  "830."  The 
court  enjoined  them  from  using  the  figures  "830"  to  designate 
the  Connecticut  goods,  and  from  using  on  the  label  the  word 
"Seamless"  printed  in  imitation  of  "Shawknit." 

§  61.  Initials  as  Names  of  Goods.  —  The  fact  that  the  let- 
ters used  by  the  plaintiff  are  the  initials  of  the  defendant  will 
not  excuse  his  adopting  them  as  a  trade  name,  if  to  do  so  will 
cause  confusion.  Charles  Bayer  stamped  his  initials  "C.  B." 
on  corsets.  After  corsets  so  marked  and  so  known  had  long 
been  on  the  market.  Council  Brothers  &  Co.,  were  not  entitled 
to  mark  their  corsets  conspicuously  "C.  B."  with  the  addition 
of  "&  Co."  in  small  letters,  nor  to  advertise  them  as  "C.  B." 
corsets."^    See  §  56. 

§  62.  Numerals  Used  to  Designate  Series,  etc.  —  Series  of 
numbers  used  by  a  manufacturer  of  labels  in  its  catalogues  and 

"21  Blatch.  1-1882  (C.  C.  N.  Y.).  with  the  letters  "M.  F.  H.,"  claim- 
''^  Bayer  v.  Baird,  15  R.  P.  C.  615;  ing  that  it  had  acquired  the  right  to 
American  Tin  Plate  Co.  v.  Licking  use  them  from  a  man  whose  initials 
Roller  Mill  Co.,  158  Fed.  690-1902  they  were,  although  it  appeared  that 
(C.  C.  Ky.).  Complainant  and  its  he  did  business  and  was  known  as 
predecessor  had  long  used  as  a  trade-  "Martin  Herman,"  without  the  mid- 
mark  the  letters  M  F  in  monogram,  die  initial.  Held  unfair  competition; 
inclosed  in  a  circle,  and  their  product  it  not  being  permissible  to  use  such  a 
was  known  and  designated  in  the  mark  as  will  tend  to  cause  a  rival's 
trade  as  "M.  F."  plate.  Defendant  goods  to  be  known  by  the  same  name 
then   began   to   make   plate   marked  as  those  of  the  original  manufacturer. 


Numerals  Used  to  Designate  Series,  etc.  107 

on  boxes  containing  the  labels,  not  primarily  to  indicate  origin, 
but  to  designate  the  color,  shape  and  size  of  the  label,  each  kind 
bearing  a  different  number,  do  not  in  themselves  constitute 
good  trade-marks,  nor  is  such  manufacturer  entitled  on  the 
ground  of  unfair  competition  to  restrain  the  use  of  the  same 
numbers  in  the  same  way  and  for  a  similar  purpose  by  another 
in  connection  with  his  own  name,  there  being  no  simulation  in 
dress  or  style  of  package/^ 

Where,  however,  the  goods  designated  by  the  numbers  are  for 
similar  purposes,  as,  for  instance,  repair  parts  or  batteries  for 
lights,  and  the  like,  and  in  addition  one  or  more  features  of  the 
get-up  of  defendant's  goods  is  made  to  resemble  plaintiff's  goods, 
the  use  of  the  numbers  will  be  considered  as  unfair. 

In  Avery  v.  Meikle,^^  there  is  a  full  discussion  of  the  relation  of 
unfair  competition  to  the  use  of  numerals  denoting  series  of  goods. 

In  Deering  Harvester  Co.  v.  Whitman  and  Barnes  Co.^^  a  dis- 
tinction is  made  between  letters  and  numerals  used  on  parts 
of  a  manufactured  article  to  designate  the  size,  shape  and  ca- 
pacity of  the  article  and  to  distinguish  it  from  other  sizes  and 
shapes  with  no  intention  or  expectation  of  indicating  by  them 
origin  or  source  of  manufacture,  and  marks  which  are  designed 
primarily  to  distinguish  each  of  the  articles  to  which  they  are 
affixed,  from  similar  articles  produced  by  others.  The  court 
holds,  speaking  of  marks  used  to  identify  repair  parts  of  mowing 
and  reaping  machines,  that  "Any  office  which  these  marks  per- 
form as  designations  of  origin  is  purely  accidental"  (p.  380). 
It  considers  that  all  persons  may  make  repair  parts  and  hence 
it  is  not  unfair  trade  to  use  these  symbols  in  such  manufacture. 

This  case  does  not,  it  would  seem,  decide,  finally,  the  questions 
it  discusses,  for  it  is  certain  that  if  its  principles  be  widely  applied 
great  injury  must  be  done  to  the  business  and  reputation  of  manu- 
facturers of  intricate  articles  needing  repair  parts,  if  it  is  possible 
for  consumers  to  be  misled  by  a  competitor's  use  of  such  numbers 
or  marks  into  buying  cheap  parts  that  may  interfere  with  the 
use  of  such  articles.  See  chapter  on  ''Simulation  of  Articles 
Themselves." 

■'^Dennison  Mfg.  Co.  v.  Scharf  sogi  Ky.  73.  See  also  Westcott 
Tag,  Label  &  Box  Co.,  135  Fed.  625-  Chuck  Co.  v.  Oneida  Nat.  Chuck  Co., 
1905  (C.  C.  A.  6th  Cir.).  122  App.  Div.  (N.  Y.)  260-1907. 

8»  91  Fed.  376. 


108 


Trade  Names  —  General  Principles 


§  63.  Names  of  Goods  Intended  for  Export.  —  The  fact  that 
goods  are  exported  to  countries  where  other  languages  are  spoken 
may  inject  into  the  question  of  the  use  of  a  name  the  interpreta- 
tion which  may  be  placed  upon  the  name  by  the  foreign  con- 
sumers. Cases  of  this  sort  arise  over  colors  of  trade-marks,  over 
names  of  the  goods,  and  over  names  of  the  houses  which  do  the 
exporting;  and  it  has  been  held  repeatedly  that  it  is  unfair  com- 
petition for  a  house  to  export  goods  under  any  label  or  name  which 
may  tend  to  pass  off  its  goods  in  the  foreign  market  as  those 
of  some  other  person  regardless  of  whether  the  same  names  or 
labels  would  have  that  effect  at  home.^^  In  R.  Johnston  &  Co.  v. 
Archibald  Orr  Ewing  &  Company,^-'  the  plaintiff  before  1875  was  in 
the  habit  of  exporting  to  Bombay,  Turkey,  red  yarn  or  twist,  with 
labels  affixed  to  the  inner  covering  of  each  package.  The  labels 
were  "  of  a  triangular  shape  bearing  in  green  and  gold  colours  the 
device  of  two  elephants,  with  a  drooping  cloth  or  banner  suspended 
between  them,  upon  which  are  printed  the  words  '  Prime  Turkey 

82  Gout  V.  Aleploglu,  6  Beav,   69-      began  to  send  shovels  to  Australia 


1833.  Gout  made  watches  for  Turk- 
ish markets  where  they  acquired  great 
repute  by  the  marks  on  them,  which 
consisted  of  Gout's  name  in  Turkish  and 
"  Pessendede  "  (warranted)  — and  other 
minor  marks.  Defendant  had  watches 
made  with  the  words  "Ralph  Gout" 
and  "  Pessendede  "  in  Turkish  engraved 
on  same  part  of  watch  that  plaintiff  put 
these  marks.     Injunction  granted. 

Collins  Company  v.  Oliver  Aines  & 
Sons  Corporation,  18  Fed.  561-1882 
(C.  C.  S.  D.  N.  Y.).  Plaintiff  was 
a  corporation  organized  in  1843  to 
carry  on  an  already  established 
business  in  Connecticut  of  making 
edge  tools,  its  corporate  powers, 
however,  extending  to  the  making 
of  all  articles  of  metal.  The  trade 
name  stamped  on  the  goods,  both  be- 
fore and  afterward,  was  "Collins  & 
Co.,"  by  which  name  its  goods  were 
known  all  over  the  world.  Defendant 
was  the  successor  of  Oliver  Ames  & 
Sons,  well-known  makers  of  shovels 
and  other  tools.     In  1856,  this  firm 


stamped  "Collins  &  Co.,"  this  name 
being  adopted  to  take  advantage  of 
the  plaintiff's  reputation  for  the 
quality  of  its  tools,  which  were  then 
sold  in  Australia,  though  plaintiff 
manufactured  no  shovels  at  all  until 
long  after  1856.  Oliver  Ames  &  Sons, 
and  defendants,  their  successors,  also 
used  on  their  goods  labels,  indicating 
that  they  were  manufactured  "by 
Colhns  &  Co.,  North  Easton,  Mass., 
U.  S.  A."  They  used  the  name  "Col- 
lins &  Co."  only  in  the  export  trade. 
Held,  that  the  defendant  had  no  right 
to  the  use  of  the  name  "  Colhns  &  Co." 
against  plaintiff,  although  defendant 
had  long  exported  shovels  under  that 
name  while  plaintiff  had  no  trade  in 
shovels  —  in  view  of  the  fact  that 
since  1843,  plaintiff  had  the  right  to 
make  shovels  and  of  the  circumstances 
under  which  the  use  of  the  name  by  the 
defendant  originated.  See  also  chap- 
ters on  "  Trade  Names  "  and  "  Geo- 
graphical Names." 
«2"  7  App.  Cas.  219. 


Signs  109 

red  No.  40'  (or  other  number  according  to  the  fineness  of  the 
yarn)."  The  goods  so  labeled  were  consigned  to  plaintiffs'  agents 
in  Bombay,  by  whom  they  were  sold  in  the  interior  and  to  local 
consumers.  Subsequently  the  defendant  adopted  a  label  con- 
taining a  representation  of  two  elephants  holding  a  suspended 
banner  for  use  in  connection  with  the  sale  of  similar,  though  in- 
ferior goods,  in  the  same  market. 

In  dismissing  an  appeal  from  a  decision  of  the  Court  of  Appeals, 
affirming  a  decision  of  Fry,  J.,  granting  an  injunction  to  the  plain- 
tiff, the  Lord  Chancellor  (Lord  Selborne)  wrote: 

*'But  although  the  mere  appearance  of  these  two  tickets  could 
not  lead  any  one  to  mistake  one  for  the  other,  it  might  easily 
happen  that  they  might  both  be  taken  by  the  natives  of  Aden  or  of 
India,  unable  to  read  and  understand  the  English  language,  as 
equally  symbolical  of  the  plaintiffs'  goods.  To  such  persons  or  at 
least  to  many  of  them,  even  if  they  took  notice  of  the  differences 
between  the  two  labels,  it  might  probably  appear  that  these  were 
only  differences  of  ornamentation,  posture,  and  other  accessories, 
leaving  the  distinctive  and  characteristic  symbol  substantially 
unchanged. 

§  64.  Signs.  —  Business  signs  are  not  restricted  to  those  bear- 
ing the  name  of  the  owner  of  the  business  or  that  of  the  store  or 
business  itself.  A  globe,  a  device  or  figure  of  any  sort  with  which 
the  public  comes  to  associate  the  business  which  it  advertises, 
is  a  sign ;  and  a  sign  may  be  made  use  of  by  a  trader  who  competes 
unfairly  to  defraud  a  rival  of  business  rightfully  belonging  to 
him.  Sometimes  these  signs  are  descriptive  of  a  particular  place 
and  cannot  be  used  apart  from  that  place;  but  usually  the  sign 
goes  with  the  business  when  it  moves  and  the  owner  can  restrain 
one  moving  into  the  place  which  he  has  vacated  from  using  the 
sign  he  has  been  using.^^ 

^^Glenny  v.  Smith,  2  Drew.  &  Sm.  words  "Thresher  and  Glenny"  (the 
476-1865.  Defendant  had  been  in  name  of  plaintiffs'  firm)  in  large  let- 
plaintiffs'  employ  and  started  in  busi-  ters.  He  had  an  awning  in  front  of  his 
ness  on  his  own  account.  Over  his  shop,  which,  when  let  down,  would 
shop  he  had  his  own  name,  Frank  D.  cover  his  own  name  and  expose  only 
Smith,  printed  in  large  black  letters  the  name  of  plaintiffs'  firm.  The 
on  a  white  ground;  but  on  the  brass  court  held  that  defendant  was  deceiv- 
plates  under  the  windows  of  his  ing  the  public,  and  an  injunction  was 
shop  he  had  engraved  the  word  issued.  Croft  v.  Day,  7  Beav.  84- 
"from"    in    small    letters,    and    the  1843;  Levy  v.   Walker,   10  Ch.  Div. 


110  Trade  Names  —  General  Principles 

If  a  name  or  sign  device  becomes  associated  in  the  public  mind 
with  a  particular  locahty  to  the  extent  that  it  becomes  a  sort  of 
fingor-post  used  by  buyers  to  pick  out  or  find  their  way  to  a 
particular  dealer  or  to  the  place  or  building  which  is  occupied 
by  such  a  dealer  no  rival  of  his  may  set  up  the  same  or  a 
similar  sign  or  device  if  its  use  is  likely  to  lead  to  confusion. 
On  moving  into  the  neighborhood  of  a  rival  using  a  particular 
sign,  one  may  not  adopt  the  same  sign  if  this  would  cause 
the  public  to  confuse  the  two  places  of  business.  This  has 
been  held  of  a  globe  used  by  one  who  moved  into  a  store 
next  door  to  one  already  using  a  globe  as  a  sign.^^  It  is  the 
custom  in  certain  lines  of  trade,  for  concerns  owning  many 
stores  to  paint  the  store  fronts  a  peculiar  color,  and  use 
a  sign  of  an  individual  type  for  the  purpose  of  enabling  cus- 
tomers to  identify  all  the  various  stores  as  belonging  to  one  con- 
cern. The  misuse  of  such  a  store  get-up  may  easily  be  unfair 
competition. 

Sometimes  there  is  no  question  as  to  form  of  the  sign  in  ques- 
tion, but  it  has  been  so  placed  as  to  cause  confusion  among  those 
using  it,  or  seeking  to  be  guided  by  it.    For  instance,  in  McFell 

436-1879;  Turton  v.  Turton,  42  Ch.  company  for  the  past  eleven  years," 
Div.  128-1889;  Hookman  v.  Pottage,  Held  (on  application  for  preliminary 
L.  R.  8  Ch.  App.  91-1872;  Meneely  injunction),  that  he  should  not  be 
V.  Meneely,  62  N.  Y.  427-1875;  Full-  enjoined  from  representing  himself 
wood  V.  Fullwood,  9  Ch.  Div.  178-1878.  as  formerly  connected  with  the  com- 
Newark  Coal  Co.  v.  Spangler,  54  pany.  Court  disapproves  here  of 
N.  J.  Eq.  354-1896;  34  Atl.  932.  Partridge  v.  Menck,  2  Sandf.  Ch. 
Defendant,  having  for  some  years  (N.  Y.)  622-1845. 
been  engaged  in  the  coal  business  un-  ^^  Lippman  v.  Martin,  5  Ohio  N.  P. 
der  the  name  of  the  Newark  Coal  120;  8  Ohio  Dec.  485-1898.  Where 
Company  (Incorporated),  formed,  one  moved  his  clothing  store  next 
with  others,  in  1892,  a  corporation  door  to  a  clothing  store  called  "The 
under  the  same  name  and  transferred  Globe"  and  placed  in  his  windows 
to  it  his  business  and  good-will.  He  and  in  conspicuous  places  globes  rep- 
was  for  four  years  president  and  a  di-  resenting  the  earth  similar  in  appear- 
rector  of  the  company.  He  then  ance  to  those  used  by  "The  Globe," 
ceased  to  be  a  director  or  officer,  and  had  misleading  signs  arranged, 
though  retaining  stock,  and  went  into  and,  in  various  ways,  endeavored  to 
the  coal  business  on  his  otsti  account,  induce  the  pubhc  to  beheve  that  his 
advertising  himself  as  "Formerly  of  store  was  "The  Globe"  or  part 
the  Newark  Coal  Company"  and  ap-  thereof,  an  injunction  is  warranted 
pealing  for  orders  to  the  customers  restraining  him  from  unfair  competi- 
"who  have  patronized  him  and  his  tion. 


Signs 


111 


Electric  &  Telephone  Co.  v.  McFell  Electric  Co.,^-'  a  company 
organized  to  compete  with  an  existing  company,  adopted  a  name 
very  like  that  of  this  older  concern,  and  took  offices  in  the  same 
building.  The  new  company  then  caused  its  name  to  appear  on 
the  bulletin-board  of  the  building  directly  above  the  older  com- 
pany's name.    This  was  held  unfair  competition. 

That  the  courts  will  restrain  the  use  of  certain  signs  is  not  to 
admit  that  anyone  has  exclusive  property  in  any  shape,  size, 
color,  or  arrangement  used  on  the  sign.^^  The  real  basis  of  the 
court's  interference  is  the  resulting  confusion.  If  a  dentist  has 
already  a  sign  reading  "United  States  Dental  Association"  and 
another  dentist  comes  along  and  exhibits  a  sign  *'U.  S.  Dental 
Rooms"  very  hke  it  and  customers  are  misled,  the  court  con- 
siders it  plainly  an  attempt  to  confuse  the  pubhc  and  pass  off  the 
newer  office  as  the  one  longer  established.^^ 


«U10  lU.  App.  182-1903.  The 
"McFell  Electric  and  Telephone  Com- 
pany" was  organized  some  years  after 
the  "McFell  Electric  Company"  and 
took  offices  in  the  same  building  and 
put  its  sign  on  the  bulletin  board  of 
the  building  directly  above  that  of  the 
old  company  so  as  to  give  the  impres- 
sion that  they  were  one  and  the  same 
company.  Held,  "The  circumstances 
justify  the  inference  that  it  was  for 
some  such  purpose  the  location  was 
selected.  This  is  not  open  and  honest 
competition.  It  has  every  appear- 
ance of  an  attempt  to  mislead  the 
pubhc,  and  to  obtain  by  deception  the 
benefit  of  the  patronage  and  clientage 
enjoyed  by  appellee.  Courts  of  equity 
give  relief  against  such  violations  of 
the  rules  of  honest  and  fair  deaUng. 
Citing  Merchants'  Detective  Asso.  v. 
Detective  Mercantile  Agency,  25  111. 
App.  250-1888." 

88(70^2/  v.  Schultz,   19 
1895;  32  Atl.  915;  29  L. 

^■'Cady  V.  Schultz,   19 
1895;  32  Atl.  915;  29  L. 
Plaintiff  ran  dental  offices  which  he 
called  "United  States  Dental  Asso- 


R. 

I. 

193- 

R. 

A. 

524. 

R. 

I. 

193- 

R. 

A. 

524. 

ciation,"  at  Providence,  R.  I.  De- 
fendant opened  an  office  in  Pawtucket 
and  exhibited  signs  closely  resembUng 
in  shape,  size,  and  color  those  of  the 
plaintiff.  "We  have  no  doubt"  (said 
the  court,  p.  194)  "from  the  evidence 
that  these  imitations  were  inten- 
tional." Customers  were  misled. 
"We  are  of  the  opinion  that  the  com- 
plainant can  have  no  property  in  the 
shape,  size,  color,  or  arrangement  of 
signs,  without  regard  to  the  letters 
which  they  bear,  nor  can  he  claim  any 
exclusive  use  of  the  words  'scientific 
dentistry  at  moderate  prices.'  The 
characteristics  of  the  signs  do  not 
differ  from  those  which  ordinarily 
appear  in  business  signs  placed  as 
these  are.  The  statement  that  a  den- 
tist does  his  work  scientifically  and 
charges  moderate  prices  for  it  is  one 
which  any  dentist  may  make  and 
disseminate  if  he  can  do  so  truthfully. 
It  ought  not  to  be  inapplicable 
equally  to  all  members  of  the  pro- 
fession. Neither  of  these  things 
tends  to  injure  unlawfully  the  com- 
plainant's business. 

But  we  think  the  use  of  the  words 


112 


Trade  Names  —  General  Principles 


These  rules  apply  to  signs  of  all  descriptions  —  on  stores, 
wagons,  hats  of  employees,  and  vehicles. 

§  65.  Street  Addresses,  etc.  —  Associated  closely  with  signs 
and  business  names  are  the  cases  arising  over  disputes  as  to 
the  use  of  a  street  address.  It  is  not  necessary  to  point  out 
that,  sometimes  confusion  in  the  use  of  business  addresses,  may 
be  of  serious  importance.  For  instance,  "Number  10  South 
Water  Street"  was  widely  advertised  by  Hall,  as  the  place  where 


'U.  S.  Dental  Rooms,'  and  the  use  of 
the  letters  'U.  S.'  upon  the  windows  of 
defendant's  office  is  a  plain  attempt  to 
convey  the  idea  that  the  business  car- 
ried on  there  is  a  branch  of  the  com- 
plainant's business,  and  should  be  re- 
strained" (id.  p.  194).  The  case  of 
Colton  V.  Thomas,  2  Brewst.  (Pa.) 
30S-1S69;  7  Phila.  257,  is  to  the  same 
effect.  A  simulated  card  issued  by  a 
dentist,  or  sign  put  up  by  him,  cal- 
culated to  deceive  the  uncautious  or 
unwary  into  believing  that  his  rooms 
are  those  of  another  dentist,  thereby 
depriving  the  latter  of  his  just  business, 
will  Ije  restrained. 

Johnson  v.  Hitchcock,  3  N.  Y. 
Supp.  GSa-1888  (Sup.  Ct.  Sp.  Term). 
Plaintiff,  a  real  estate  auctioneer, 
extensively  advertised  suburban  lots 
for  sale  on  the  installment  plan, 
and  used  conspicuously  in  his  ad- 
vertising the  representation  of  a 
flag  with  stars  arranged  in  an  effective 
and  striking  way  along  the  borders. 
Held,  that  he  was  entitled  to  restrain 
defendant  from  using  an  advertise- 
ment of  a  similar  kind,  —  the  repre- 
sentation of  a  flag  closely  resembUng 
plaintiff's  in  design. 

Goodwin  v.  Hamilton,  19  Pa.  Co.  Ct. 
652-1897;  6  Pa.  Dist.  705.  Wliere  a 
hotel  proprietor  maintains,  for  carry- 
ing travelers  to  and  from  the  station, 
a  line  of  hacks  with  the  name  of  his 
hotel  on  tliem,  the  owner  of  a  rival 
hack  line  will  be  restrained  from  plac- 


ing the  same  words  upon  his  convey- 
ances. 

De  Youngs  v.  Jung,  7  Misc.  (N.  Y.) 
56-1894;  27  N.  Y.  Supp.  370.  Plain- 
tiff used  its  corporate  name,  "De 
Youngs,"  as  a  trade-mark  or  trade 
name  in  its  photographic  business. 
Defendant,  Solomon  Jung,  then  en- 
gaged in  a  similar  business  one  block 
away  from  the  plaintiff,  using,  on 
signs,  stationery,  etc.,  the  name  "The 
Youngs"  in  script  similar  to  that  em- 
ployed by  the  plaintiff,  and  with  a 
similar  dash  under  the  words.  Al- 
though defendant's  business  was  only 
two  or  three  years  old  his  circulars 
referred  to  the  well-known  "reputa- 
tion of  our  work"  and  contained 
copies  of  medals  awarded  at  the 
Exhibition  of  1876.  Held,  that  it  was 
unfair  competition.  Interlocutory  in- 
junction granted. 

Eggers  v.  Hink,  63  Cal.  445-1883. 
Plaintiff  sold  "  Philadelphia  Beer,"  and 
his  sign  consisted  of  a  row  of  barrels 
marked  "P.  B.,"  with  "Depot  of  the 
Celebrated"  above,  and  "Philadelphia 
Lager  Beer"  below.  Defendant  used  a 
similar  sign  except  that  "F.  B."  was 
substituted  for  "P.  B."  and  "Fred- 
ericksburger "  for  "Philadelphia." 
Held,  that  plaintiff's  sign  could  not  be 
protected  as  a  trade-mark  —  it  was 
rather  a  description  of  the  beer  and  for 
all  that  appeared,  defendant  had  an 
ec[ual  right  to  its  use. 


Street  Addresses,  etc. 


113 


he  made  threshing  machines.  A  rival  came  along,  and  located 
an  office  in  South  Water  street,  but  made  his  goods  two  miles 
away.  Despite  this  he  advertised  that  his  goods  were  made  at 
''Number  10  South  Water  Street."  The  court  held  that  these 
facts  showed  a  proper  subject  for  the  interference  of  equity  on 
the  ground  that,  by  establishing  a  business  at  a  particular  ad- 
dress, the  pubHc  from  the  name  and  description  used  came  to 
know  where  or  in  what  manner  it  was  carried  on,  and  hence  the 
owner  of  it  had  acquired  a  property  in  that  address.^^ 


««  The  Glen  &  Hall  Mfg.  Co.  v.  C. 
S.  Hall,  Gl  N.  Y.  226-1874.  For 
thirty  years,  Joseph  Hall  manufac- 
tured threshing  machines  at  No.  10 
South  Water  street,  in  Rochester,  N. 
Y.  Defendant,  Charles  Hall,  bought 
out  Joseph  Hall  and  adopted  as  his 
trade-mark  "The  Old  Joseph  Hall 
Agricultural  Works,  No.  10  South 
Water  Street,  Rochester,  New  York." 
Later,  plaintiff,  in  1869,  opened  an 
office  near  defendant's,  and  printed 
on  its  bills  and  signs  "The  Glen  & 
Hall  Manufacturing  Company,  Num- 
ber 10  South  Water  Street,  Roch- 
ester, N.  Y."  The  plaintiff's  shops 
were  not  in  Rochester  and  were  two 
miles  away  from  the  shops  of  the 
defendant.  It  took  the  office  in 
Water  street  and  adopted  the  "Num- 
ber 10"  with  the  intention  of  inter- 
fering with  the  defendant's  business. 
Held,  it  was  a  species  of  property 
and  on  that  ground  is  under  the  pro- 
tection of  a  court  of  equity.  It  was 
not  denied  by  the  plaintiff  that  the 
words  "Number  ten"  did  not  cor- 
respond to  any  street  number.  It 
was  the  opinion  of  the  court  that  the 
invasion  of  the  defendant's  right  was  a 
proper  ground  for  the  protection  of 
equity  and  that,  in  an  action  brought 
by  the  plaintiff,  a  counterclaim  on  the 
part  of  the  defendant  alleging  that  he 
is  the  owner  of  the  name  that  the  plain- 
tiff  has   wrongfully   used,    and    that 


plaintiff  be  restrained  from  such  use 
and  be  ordered  to  pay  damages  will  be 
upheld.  "It  would  follow,  from  these 
principles,  that  if  a  person  had  estab- 
lished the  business  at  a  particular 
place,  from  which  he  has  derived,  or 
may  derive,  profit  and  has  attached 
to  that  business  a  name  indicating  to 
the  public  where  or  in  what  manner 
it  is  carried  on,  he  has  acquired  a 
property  in  the  name  which  will  be 
protected  from  invasion  by  a  court 
of  equity,  on  principles  analogous  to 
those  which  are  apphed  in  case  of 
the  invasion  of  a  trade-mark"  (id. 
p.  231),  and  the  name  may  be  severed 
from  the  place  where  it  has  been  used, 
for  "It  seems  plain  that  if  a  banking- 
house  had  acquired  a  name,  such  as 
that  of  Baring  Brothers,  though  there 
were  no  partner  of  the  name  of  Bar- 
ing, it  would,  on  general  principles  of 
law,  and  independent  of  a  statute  pre- 
venting the  use  of  fictitious  names 
have  a  property  in  such  name,  without 
reference  to  the  particular  place  where 
the  business  was  carried  on.  Though 
the  name  might  be  inseparable  from 
the  business,  it  would  be  separable 
from  the  premises;  so  that  the  business 
might,  for  example,  be  carried  on  on 
the  opposite  side  of  the  street." 

Harper  v.  Pearson,  3  L.  T.  N.  S.  547. 
Defendants  occupied  a  place  formerly 
used  by  Harper  &  Pearson.  They  did 
not  have  the  clay  mines  used  by  that 


114 


Trade  Names  —  General  Principles 


§  66.  Use  of  Suffix  "  &  Co.,"  etc.  —  One  person  may  use  a 
name  with  the  suffix  "&  Co."  This  fact  does  not  estop  him 
from  showing  that  he  alone  is  the  real  party  in  interest.^^ 


firm,  but  they  advertised  that  they 
were  "late  Harpers  &  Moore."  Fol- 
lowed in  Glen,  etc.,  Co.  v.  HaM,  61  N.  Y. 
226-1874.  See  also  Marsh  v.  Billings, 
7  Cush.  322. 

Croft  V.  Day,  7  Beav.  84-1843. 
The  "Day  &  Martin  blacking" 
was  put  up  in  bottles  with  a  label,  etc., 
containing  as  the  place  of  manufac- 
ture "97  High  Holborn."  The  ar- 
ticle was  made  by  the  executors  of 
the  surviving  partner  of  Day  &  Mar- 
tin, who  continued  the  business  in 
their  name.  The  defendant,  Day,  a 
nephew  of  the  testator,  associated 
with  a  person  named  Martin  and  set 
up  a  blacking  manufactory,  using 
the  old  firm  name  and  labeling  their 
bottles  in  a  manner  closely  resem- 
bling those  of  the  old  establishment. 
In  the  cut  on  the  label  they,  however, 
substituted  the  royal  arms  for  those 
of  the  original  firm,  and  inserted 
"90i  Holborn  Hill,"  in  the  place  of 
"97  High  Holborn."  Lord  Langdale 
said  the  defendants'  contrivances 
were  calculated  to  mislead  the  bulk  of 
the  unwary  public  into  the  impres- 
sion that  the  new  concern  was  con- 
nected with  the  old  manufactory  and 
thus  to  benefit  the  defendant,  to  injure 
the  plaintiff,  and  to  deceive  the  pub- 
lic; and  he,  therefore,  directed  an  in- 
junction to  issue. 

Pierce  v.  Franks,  15  L.  J.  (Ch.)  N.  S. 


122  (Jan.  13,  1846).  The  complainant 
was  in  the  habit  of  seHing  tooth- 
brushes and  nail-brushes  on  which  were 
stamped  "Smyth's  Bond  Street,"  that 
being  the  trade-mark  to  which  he  was 
entitled;  and  they  also  had  stamped 
on  them  certain  figures  and  letters 
which  were  his  private  marks,  and 
were  used  to  distinguish  the  different 
sizes  and  patterns.  The  bill  alleged 
that  the  defendant  made  and  sold 
brushes  which  were  stamped  with 
the  same  words  and  the  same  pri- 
vate trade-marks.  An  injunction 
was  granted  restraining  the  defend- 
ant from  selling  brushes  on  which 
"Smyth's  Bond  Street"  was  stamped. 

Street  v.  Union  Bank,  30  Ch.  Div. 
156-1885.  Street  &  Co.,  of  Cornhill, 
for  a  long  time  used  "Street,  London," 
as  a  telegraphic  address.  In  1882, 
same  words  were  registered  as  tel- 
egraphic address  of  defendant.  In- 
junction asked.  Plaintiff  was  adver- 
tising concern.  Defendant  was  a  bank. 
Their  business  did  not  conflict. 
Held,  that  "All  the  court  is  asked  to 
prevent  is  merely  an  inconvenience. 
To  my  mind,  the  Union  Bank  of  Spain 
and  England  has  done  nothing  un- 
lawful" (at  p.  1.58). 

89, /ones  V.  Goodrich,  17  111.  380; 
M oiler  V.  Lambert,  2  Campb.  548; 
Teed  v.  Elworthy,  14  East,  210;  Green- 
leaf  Evidence,  278. 


CHAPTER  VI 

Family  Names  or  Surnames,  as  Trade  Names 

Section  67.  Nature  of  the  Right  to  Use  One's  Own  Name. 

68.  The  Right  of  Every  Man  to  Use  His  Own  Name:  Its  Character  and 

Misconceptions  Regarding  It. 

69.  Early  Cases  Deahng  with  the  Use  of  Personal  Names. 

70.  Explanatory  Phrases  as  a  Means  of  Eliminating   Confusion  in 

Family  Names. 

71.  The  Inadequacy  of  the  Explanatory  Phrase  Rule. 

72.  Acquired  Generic  or  Secondary  Meaning  of  Personal  Names. 

73.  Family  Names  as  Generic  or  General  Names  of  Articles. 

74.  Surnames  Used  as  Abbreviations. 

75.  Names  Made  Up  of  Surnames  Qualified  by  Other  Words  or 

Symbols. 

76.  Surnames  Acquired  Otherwise  than  by  Descent. 

77.  Voluntary  Change  of  Personal  Name. 

78.  Rights  Acquired  by  Him  Who  First  Uses  a  Surname  in  Business. 

79.  Family  Names  as  Corporate  Names. 

80.  Rights  of  Descendants  to  the  Family  Name  Used  in  Business  by  an 

Ancestor. 

81.  Prefixes,  Suffixes  and  First  Names. 

The  prestige  which  the  pubUc  attaches  to  many  family  names 
used  in  business  is  perhaps  the  most  interesting  phase  of  trade- 
mark and  unfair  competition  law.  There  are  many  classic  business 
names  which  are  the  last  names  of  men  long  dead.  The  individ- 
uaUty  of  the  person  who  first  applied  such  a  name  to  the  business 
that  still  uses  it,  has  long  since  been  forgotten.  The  particular 
abilities  which  he  possessed  and  which  he  contributed  to  the 
business  were  lost  to  it  long  ago.  The  processes  he  devised  and 
used  have  been  abandoned.  The  business  which,  in  his  hands, 
was  devoted  to  one  phase  of  trade  may  now  be  devoted  to  another 
phase.  There  may  now  be  no  one  connected  with  the  concern 
that  bears  the  founder's  name  or  is  in  any  way  related  to  him. 
Despite  all  these  things,  this  man's  name  in  this  sphere  of  trade 
may  be  of  immense  value.  In  it  the  public  may  place  confidence 
above  all  names  in  that  commercial  field,  and  this  name  as  now 
used  by  this  business  house,  although  not  associated  with  any 

115 


IIC)       Family  Names  or  Surnames,  as  Trade  Names 

member  of  the  family  of  which  it  is  the  surname,  or  with  any 
person  at  all,  lives  on,  a  piece  of  industrial  property,  which  at 
the  bar  of  the  court  has  rights  very  similar  to,  if  not  identical 
with,  those  of  him  who  first  attached  it  to  the  business  that  it 
still  identifies.  Fifty  years  ago  little  attempt  was  made  by 
the  courts  to  deal  with  the  protection  of  the  good-will  that  is 
bound  U])  in  such  names ;  but  as  the  law  of  unfair  competition  has 
developed,  distinct  rules  have  been  laid  down  regulating  the 
relative  rights  of  the  owners  of  a  business  identified  by  such  a 
name  and  the  rights  of  other  persons  who  also  bear  this  same  name 
as  a  patronymic. 

The  attitude  of  the  courts  toward  questions  arising  as  to  family 
names  will  be  made  clearer  by  a  study  of  the  protection  given 
to-day  by  equity  to  various  other  personal  rights.  The  question  of 
personal  rights  is  a  far  different  question  now  from  what  it  was  a 
century  ago.  To  these  changed  conditions  equity  must  and  does 
adapt  its  remedies,  often  varying  its  method  of  relief,  although 
never  changing  its  few  rules  or  curtailing  its  powers  by  specific 
limitation  or  definition. 

§  67.  Nature  of  the  Right  in  One's  Own  Name.  —  A  man 
has  distinct  trade  rights  in  his  family  or  personal  name.  Just 
what  is  their  extent  is  disputed,  but  rights  he  most  assuredly  has, 
and  these  rights  are  such  as  usually  will  be  protected  by  an  equity 
court.  The  general  UTipression  is  prevalent  that  a  man's  name, 
like  his  house,  is  particularly  his  own;  and  an  Enghshman  or 
rVmerican  is  quick  to  resent  any  interference  with  such  rights  by 
the  courts.  The  common  law  has  taught  them  that  "every  man's 
house  is  called  his  castle.  Why?  Because  it  is  surrounded  by 
a  moat  or  defended  wall?  No.  It  may  be  a  straw-built  hut: 
the  wind  may  whistle  through  it,  the  rain  may  enter  it,  but  the 
king  cannot."  ^     And  his  name  is  dearer  to  him  than  his  house. 

It  is  only  in  recent  times  that  the  necessity  for  protection  of 
one's  name  by  injunction  has  become  important.  Formerly,  hbel 
and  slander  afforded  about  the  only  ways  by  which  one  could 
injure  another's  name.  Now,  through  the  multiplication  of 
advertising  methods  and  through  the  present  means  of  reaching 
the  pubhc  the  instruments  at  the  hand  of  a  person  disposed  to 
injure  his  competitor's  good  name  and  business  reputation  are 
legion. 

^  Stephens'  Dig.  Evidence,  Introd.  p.  23. 


Right  of  Every  Man  to  Use  His  Own  Name       117 


As  said  above,  every  man  has  a  right  to  the  use  of  his  own  name. 
That  is  the  first  principle.  To  this  the  law  of  unfair  competition 
has  added  another  —  no  man  may  use  even  his  own  name  in  such 
manner  as  to  injure  another  unfairly  or  fraudulently  in  his  busi- 
-ness.  "While  it  is  true  that  every  man  has  a  right  to  use  his  name 
in  his  own  business,  it  is  also  true  that  he  has  no  right  to  use  it  for 
the  purpose  of  stealing  the  good-will  of  his  neighbor's  business, 
nor  to  commit  a  fraud  upon  his  neighbor,  nor  to  trespass  upon 
his  neighbor's  rights  or  property;  and  while  it  is  true  that  every 
man  has  a  right  to  use  white  paper,  it  is  also  true  that  he  has  no 
right  to  use  it  for  making  counterfeit  money,  nor  to  commit  a 
forgery."  ^ 

§  68.  The  Right  of  Every  Man  to  Use  His  Own  Name  in  Bus- 
iness :  Its  Character,  and  Misconceptions  Regarding  it.  —  The 


2  Garrett  v.  T.  H.  Garrett  &  Co.,  78 
Fed.  472-1896;  24  C.  C.  A.  173, 
Croft  V.  Day,  7  Beav.  84-1843.  Ex- 
ecutors of  Day  sought  to  restrain 
nephew  of  Day  from  making  blacking 
under  label  similar  to  those  used  by 
Day  &  Martin.  "His  (plaintiff's) 
right  is  to  be  protected  against  fraud, 
and  fraud  may  be  practiced  against 
him  by  means  of  a  name,  though  the 
person  practicing  it  may  have  a  per- 
fect right  to  use  that  name,  provided 
he  does  not  accompany  the  use  of  it 
with  such  other  circumstances  as  to 
effect  a  fraud  upon  others"  (id.  p.  88). 
"He  has  a  right  to  carry  on  the  busi- 
ness of  a  blacking  manufacturer  hon- 
estly and  fairly;  he  has  a  right  to  the 
use  of  his  own  name.  I  will  not  do 
anything  to  debar  him  from  the  use  of 
that,  or  any  other  name  calculated  to 
benefit  himself  in  an  honest  way;  but 
I  must  prevent  him  from  using  it  in 
such  a  way  as  to  deceive  and  defraud 
the  public,  and  obtain  for  himself,  at 
the  expense  of  the  plaintiffs,  an  undue 
or  improper  advantage"  (id.  p.  90). 
Cited  with  approval  in  Brown  Chemi- 
cal Co.  V.  Meyer,  139  U.  S.  540-1890; 
35  L.  ed.  247;  11  Sup.  Ct.  625. 


Holloway  v.  Holloway,  13  Beav.  209- 
1850.  Thomas  Holloway  made  and 
sold  pills,  etc.,  at  244  Strand  as  "  Hol- 
loway's  Pills  and  Ointment."  Henry 
Holloway,  a  brother  of  the  plaintiff, 
then  sold  pills  at  210  Strand  as  "H. 
Holloway 's  pills  and  ointment,"  using 
boxes  similar  to  those  of  plaintiff,  and 
copying  the  latter's  labels  and  wrap- 
pers. The  evidence  disclosed  an  in- 
tention to  profit  by  this  similarity. 
Held,  Henry  had  no  right  to  deceive 
the  public  and  make  them  believe  he 
was  selling  Thomas'  goods.  "The 
defendant's  name  being  Holloway,  he 
had  a  right  to  constitute  himself  ven- 
dor of  Holloway's  pills  and  ointment, 
and  I  do  not  intend  to  say  anything 
tending  to  abridge  any  such  right. 
But  he  has  no  right  to  do  so  with 
such  additions  to  his  own  name  as  to 
deceive  the  public  and  make  them  be- 
lieve that  he  is  selling  the  plaintiff's 
pills  and  ointment"  (id.  p.  213).  Fol- 
lowed in  Brown  Chemical  Co.  v.  Meyer, 
139  U.  S.  540-1890;  35  L.  ed.  247; 
11  Sup.  Ct.  625;  and  McLean  v. 
Fleming,  96  U.  S.  245-1877;  24  L.  ed. 
828. 


118       Family  Names  or  Surnames,  as  Trade  Names 

right  to  do  business  under  one's  own  name  is  apparently  the  most 
sacred  right  which  is  known  to  law.  This  seems  to  be  the  only 
right  which  it  is  impossible  to  forfeit  or  lose  by  misconduct. 
Rights  such  as  the  right  to  liberty,  the  pursuit  of  happiness,  to 
life,  to  the  custody  of  one's  own  children,  may  be  lost  by  mis- 
conduct, but  the  courts  have  held  that  a  man  cannot  be  deprived, 
under  any  circumstances,  of  his  right  to  do  l)usiness  under  his 
own  name,  regardless  of  the  depth  of  fraud  and  deceit  to  which 
he  may  stoop  in  its  use. 

Not  only  can  he  not  forfeit  the  general  right  to  use  his  own 
name,  but  it  now  seems  to  be  the  law  in  this  country  that  he  can- 
not forfeit  his  right  to  use  it  in  even  the  smallest  corner  of  the 
commercial  world  or  in  connection  with  the  sale  of  the  most 
insignificant  article  in  the  most  limited  way. 

An  atmosphere  has  grown  up  around  these  cases  charged  with 
the  idea  that  this  question  turns  largely  on  whether  or  not  the 
plaintiff  is  entitled  to  a  monopoly  of  the  name  in  question.  A 
fair  example  of  the  expression  of  this  idea  is  found  in  the  Knabe 
Piano  case.  The  court  there  said:  "It  is  now  settled  beyond  con- 
troversy that  a  family  name  is  incapable  of  exclusive  appropria- 
tion. The  right  of  every  man  to  use  his  own  name  in  business  was 
declared  in  the  law  before  the  modern  doctrine  of  unfair  com- 
petition had  arisen."  ^ 

It  is  axiomatic  that  a  family  name  is  incapable  of  exclusive 
appropriation  in  trade.  It  is  not  that  proposition  which  is  here 
questioned;  it  is  the  fallacy  of  its  application  by  the  courts  to 
unfair  competition  cases  which  we  endeavor  to  demonstrate.  In 
a  case  involving  the  protection  of  trade-mark  rights,  the  plaintiff, 
to  recover,  must  establish  that  he  is  entitled  to  the  exclusive  use 
of  a  symbol  in  connection  with  an  article  of  trade.  A  true  monop- 
oly is  involved.  Any  use  of  an  imitation  of  the  symbol  in  connec- 
tion with  a  similar  article  of  trade,  the  courts  will  enjoin.  On  the 
other  hand,  where  a  person  seeks  the  protection  of  the  courts 
against  the  unfair  use  of  a  family  name  in  business,  no  trade- 
mark rights  are  involved,  and  no  monopoly  is  claimed.  The  bases 
of  the  two  classes  of  cases  are  different,  but  the  relief  sought  is  the 
same  and  the  character  of  the  injury  suffered  by  the  defendant  is 
the  same.    Apparently  the  courts  are  reluctant  to  grant  as  drastic 

^  Stix,  Boer,  etc.,  v.  American  Piano  Co.,  211  Fed.  274;  Amidon,  J.,  C.  C. 
A.,  8th  Cir.,  1913. 


Right  op  Every  Man  to  Use  His  Own  Name       119 

relief  in  family  name  cases  as  in  strict  trade-mark  cases,  believing 
that  in  so  doing  they  will  place  the  two  classes  of  cases  on  the 
same  legal  basis;  in  other  words,  that  if  full  protection  to  the 
plaintiff  is  granted  against  the  unfair  use  of  a  family  name,  the 
court  has  created  in  him  a  monopoly  in  the  use  of  that  name 
similar  to  the  trade-mark  monopoly.  Accordingly,  even  in  cases 
of  the  most  flagrant  misuse  of  a  family  name,  the  courts  refuse  to 
absolutely  enjoin  a  person  from  using  his  own  name,  as  they 
would  absolutely  enjoin  the  use  of  a  trade-mark,  but  attempt  to 
nullify  the  wrong  by  compelling  the  Use  of  distinguishing  marks. 

In  so  ruling,  the  courts  overlook  the  fact  that  no  demand  is  ever 
properly  made  in  a  family  name  case  that  the  plaintiff  be  decreed 
to  be  exclusively  entitled  to  the  use  of  the  name  in  question,  as 
against  all  other  persons  of  that  name.  The  relief  sought  is  to 
compel  the  defendant  to  cease  abusing  his  right  to  use  a  family 
name,  to  the  injury  of  the  plaintiff.  An  injunction  forbidding 
such  use  in  no  case  necessarily  creates  a  monopoly.  Everyone  is 
free  regardless  of  such  a  decree  to  continue  the  use  of  this  name 
in  all  ways  that  do  not  cause  confusion  and  injury.  All  persons 
bearing  the  family  name  involved,  are  still  free  to  use  the  name  in 
all  ways  that  do  not  cause  injury  to  others.  The  whole  problem 
is  as  to  the  relative  importance  to  the  public  of  the  right  of  the 
defendant  to  use  his  name  as  an  instrument  of  fraud  and  confusion, 
and  the  right  of  the  plaintiff  to  sell  his  goods  as  his  goods  and  the 
right  of  the  pubhc  to  be  free  from  confusion  in  buying  plaintiff's 
goods. 

The  second  statement  of  the  court  in  the  Knabe  case  was  that 
''the  right  of  every  man  to  use  his  own  name  in  his  business  was 
declared  in  the  law  before  the  modern  doctrine  of  unfair  competi- 
tion had  arisen."  This  is  undoubtedly  true;  but  in  this  case,  as  in 
so  many  others,  the  court  applied  the  rule  that  under  no  circum- 
stances, and  regardless  of  the  fraud  which  the  court  might  find 
the  defendant  had  committed,  he  could  not  be  deprived  of  his 
right  to  use  his  own  name. 

The  law  relating  to  both  common  law  trade-marks  and  the  use 
of  names,  semi-public  in  character,  in  trade,  has  been  derived  from 
the  earlier  cases  which  involved  fanciful  names.  In  all  of  these 
cases  it  was  held  to  be  fundamentally  necessary,  in  order  that  a 
person  might  be  protected  in  the  use  of  a  name  in  trade,  to  show 
that  the  name  was  capable  of  being  set  aside  to  his  exclusive  use. 


120       Family  Names  or  Surnames,  as  Trade  Names 

Later  it  was  found  that  this  rule  worked  the  grossest  injustice 
in  certain  cases;  for  users  of  trade-marks  have  always  refused  to 
limit  their  choice  of  trade-marks  to  words  which  could  be  pure 
common  law  trade-marks,  but  instead  constantly  adopt  as  their 
trade  insignia,  words  in  which  it  is  impossible  for  them  to  have 
an  exclusive  right.  As  a  result,  therefore,  it  was  found  that,  if 
relief  in  these  cases  was  to  be  limited  by  this  rule,  making  it  nec- 
essary for  the  plaintiff  to  show  an  exclusive  right  to  his  name,  the 
greatest  hardship  would  be  suffered  through  the  pirating  of  the 
good-will  of  concerns  using  as  trade  insignia,  names  of  a  semi- 
public  character. 

Where  a  semi-public  name  is  adopted  as  a  trade  name,  and  that 
adoption  is  followed  by  long-continued,  honest  and  effective  use 
of  the  name  as  a  trade  name,  there  is  invariably  created  an  associa- 
tion between  the  name  and  the  person  using  it,  which  association 
becomes  extremely  valuable.  It  is  the  property  right  in  this  asso- 
ciation between  these  names  and  the  business  of  the  persons 
using  them  that  the  law  of  unfair  competition  aims  to  protect. 
While  this  association  is  the  same  in  character  as  the  association 
between  a  common  law  trade-mark  and  the  user  of  it,  if  no  pro- 
tection could  be  given  unless  an  exclusive  right  to  the  use  of  every 
name  was  proven,  there  could  be  no  protection  of  the  good- will 
in  pubHc  names  used  in  trade. 

It  is  apparent,  therefore,  that  the  principles  involved  in  an  ac- 
tion for  the  protection  of  a  common  law  trade-mark  are  clearly 
distinguishable  from  those  upon  which  an  action  for  the  infringe- 
ment of  a  family  name  are  based,  in  respect  to  the  necessity  of 
proving  exclusive  rights  in  the  name. 

There  is  good  reason  to  believe  that  the  failure  of  the  courts  in 
the  past  to  work  out  some  doctrine  by  which  adequate  relief 
can  be  administered  by  them  in  cases  involving  the  use  of  family 
names,  is  due  to  the  belief  that  if  a  person  be  enjoined  from  using 
his  family  name  in  a  particular  business,  the  court,  in  issuing  that 
injunction,  has  created  a  monopoly  and  excluded  every  other 
person  of  the  same  family  name  from  doing  that  sort  of  business 
under  his  own  name.  A  decree  forbidding  one  person  to  use  his 
name  in  one  line  of  business,  because  it  creates  confusion  and 
fraud  among  buyers  and  injury  to  the  plaintiff,  affects  only  the 
defendant  in  that  vsuit.  It  is  not  a  binding  adjudication  on  any 
other  person  regardless  of  whether  his  name  be  that  of  the  de- 


Early  Cases  121 

fendant  or  not.  The  rights  of  third  persons  are  not  lessened  or 
impaired,  and  if  such  a  person  can  find  a  way  by  which  he  can 
enter  the  business  in  question  and  make  use  of  the  same  family 
name  as  that  of  another  already  in  the  field,  so  as  not  to  create  a 
situation  of  fraud  and  confusion,  such  a  decree  will  not  prevent 
his  doing  so.  His  rights  cannot  be  pre-adjudicated  in  a  case  to 
which  he  is  not  a  party.  When  a  case  arises  where  a  defendant 
has  deliberately  misused  his  name,  —  has  made  it  an  instrument 
by  use  of  which  he  has  defrauded  another,  —  he  should  be  for- 
bidden to  longer  use  it,  not  in  all  ways,  but  merely  forbidden  to 
use  it  as  a  business  name  in  the  line  of  business  in  which  he  has 
abused  it. 

§  69.  Early  Cases  Dealing  with  the  Use  of  Personal  Names.  — 
In  1853,  Burgess  v.  Biirgess  ^  was  decided.  This  case  held  that 
every  man  had  a  full  right  to  use  his  own  name.  Father  and 
grandfather  had  sold  "Burgess's  Essence  of  Anchovies"  since 
before  1800.  The  son  then  opened  a  competing  business,  and 
he  too  called  his  goods  ''Burgess's  Essence  of  Anchovies."  His 
right  so  to  do  was  upheld.  Lord  Justice  Bruce  saying:  "All  the 
Queen's  subjects  have  a  right,  if  they  will,  to  manufacture  and  sell 
pickles  and  sauces,  and  not  the  less  that  their  fathers  have  done 
so  before  them.  All  the  Queen's  subjects  have  a  right  to  sell 
these  articles  in  their  own  names,  and  not  the  less  so  that  they 
bear  the  same  name  as  their  fathers.^  *  *  *  ^^  m.BXi  can 
have  any  right  to  represent  his  goods  as  the  goods  of  another 
person,  but  in  applications  of  this  kind  it  must  be  made  out  that 
the  defendant  is  selling  his  own  goods  as  the  goods  of  another. 
When  a  person  is  selling  goods  under  a  particular  name,  and 
another  person,  not  having  that  name,  is  using  it,  it  may  be  pre- 
sumed that  he  so  uses  it  to  represent  the  goods  sold  by  him  as  the 
goods  of  the  persons  whose  name  he  uses ;  but  where  the  defendant 
sells  goods  under  his  own  name,  and  it  happens  that  the  plaintiff 
has  the  same  name,  it  does  not  follow  that  the  defendant  is  selhng 
his  goods  as  the  goods  of  the  plaintiff.  It  is  a  question  of  evidence 
in  each  case,  whether  there  is  false  representation  or  not"  (id. 
pp.  904-5). 

This  case  has  been  widely  cited  and  repeatedly  distinguished 
and  limited  by  the  courts  of  both  England  and  this  country.    For 

=•  3  De  G.  M.  &  G.  896.  "  See    also    Rodgers    v.    Nawill,    6 

Hare,  325-1846. 


122       Family  Names  or  Surnames,  as  Trade  Names 


instance,  in  Massam  v.  Thorley's  Cattle  Food  Co.,-'  the  court  said: 
"Now  Burgess  v.  Burgess  has  been  very  much  misunderstood  if  it 
has  been  understood  to  decide  that  anybody  can  always  use  his 
own  name,  as  a  description  of  an  article,  whatever  may  be  the 
consequence  of  it,  or  whatever  may  be  the  motive  for  doing  it,  or 
whatever  may  be  the  result  of  it." 

Lord  Turner,  in  a  concurring  opinion  in  the  Burgess  case  itself, 
laid  down  unportant  lunitations  on  the  right  to  use  one's  own 
name  as  a  trade  name. 

Lord  Esher  in  Turton  v.  Turton,  a  case  decided  in  1889,  thought 
that,  in  addition  to  using  the  same  family  name  that  was  in  use 
by  some  one  already  established  in  business  under  that  name,  one 
must  also  do  other  acts  tending  to  create  confusion  in  the  mind 
of  the  pubUc,  in  order  to  be  held  guilty  of  unfair  competition.^ 


5 14  Ch.  Div.  748-52-1880. 

«  42  Ch.  Div.  128-1889.  The  names 
in  question  were  "Thomas  Turton  & 
Sons"  and  "John  Turton  &  Sons." 
Lord  Esher,  M.  R.,  held  in  substance 
as  follows:  "Now  it  is  not  proved 
against  the  defendant,  that  he  did 
anything  in  the  way  of  his  trade  which 
tended  to  give  any  other  meaning  to 
the  name  in  which  he  carried  on  his 
business,  or  which  could  give  any  other 
meaning  to  it,  than  merely  the  fact 
that  he  did  carry  on  business,  and  was 
in  partnership  with  his  sons.  He  had 
not  done  anything  with  the  intent  or 
for  the  purpose  of  making  the  use 
of  his  simple  name  look  as  if  his  name 
was  the  name  of  the  plaintiffs.  In 
some  cases,  besides  using  the  name, 
parties  have,  to  use  what  I  think  is  a 
happy  phrase  of  my  brother  Cotton's, 
'garnished  that  use,'  that  is  they  have 
done  things  besides  using  the  name,  in 
order  that  the  use  of  that  name  might 
look  as  if  it  were  being  used  by  the  old 
firm "  (id.  p.  134).  "  I  assume  that  the 
names  are  sufficiently  alike  to  cause 
blunders  in  trade;  but  they  are  blun- 
ders of  the  people  who  make  the 
blunders.     Has   the  defendant  done 


anything  so  far  to  cause  these  blunders 
even  though  he  did  not  intend  it, 
which  entitles  the  court  to  stop  him 
from  doing  what  he  is  doing?  He  is 
simply  stating  that  he  is  carrying  on 
business  with  his  two  sons  as  partners. 
I  say  that  is  the  accurate  and  exact 
truth  of  what  he  is  doing.  I  will 
assume  for  the  moment  that  it  is 
pointed  out  to  him  what  he  is  doing, 
that  blunders  will  occur  in  the  business 
and  that  the  results  which  are  com- 
plained of  will  happen.  Is  there  anj^- 
thing  dishonest,  —  is  there  anything 
wrong  morally,  in  any,  even  in  the 
strictest  sense,  in  a  man  using  his 
own  name,  or  stating  that  he  is  carrj'- 
ing  on  business  exactly  as  he  is  carrj'- 
ing  it  on?  Is  there  anything  wrong  in 
his  continuing  to  do  so,  because  people 
make  blunders,  and  even,  if  you  please, 
because  they  make  probable  blunders? 
What  is  there  wrong  in  what  he  is 
doing?  Now  it  is  said  that  the  plain- 
tiffs have  a  trade  name  and  a  property 
in  their  name.  I  doubt  about  prop- 
erty, though  they  have  this  right: 
that  no  man  shall  wTongfulIy  inter- 
fere with  their  name.  But  they  have 
no  right  to  say  that  a  man  may  not 


Early  Cases  123 

The  Turton  case  emphasizes  two  points,  viz.,  that  the  defend- 
ant cannot  be  held  accountable  for  the  stupidity  or  carelessness 
of  heedless  purchasers  who  deal  with  the  plaintiff  or  with  him; 
and  that  if,  in  the  name  the  defendant  has  used,  he  has  stated 
the  exact  truth,  he  is  not  responsible  for  injury  suffered  by  the 
plaintiff.  Both  these  questions  are  discussed  later  on  under  the 
head  of  Defenses  and  both  ideas  have  been  much  modified  by 
later  decisions. 

This  opinion  assumes  that  the  contention  is  made  that,  if 
two  persons  of  the  same  name  desire  to  enter  the  same  busi- 
ness, one  must  ''discard  his  own  name  and  take  a  false  one." 
No  one  now  contends  that  fair  dealing  demands  this;  but  it  does 
demand  that  if  these  two  namesakes  are  to  compete,  while  neither 
is  forbidden  to  use  their  common  name,  neither  must  do  any  act 
that  will  create  confusion  which  will  result  in  injury  to  the  other. 
It  is  a  question  if  in  the  near  future,  the  business  world  will  not 
demand  that  the  rule  provide  that  if  the  defendant  cannot  use  his 
name  without  confusion  resulting,  i.  e.,  if  the  explanations  he  uses 
with  it  do  not  eliminate  confusion,  then  he  may  not  use  it  at  all  in 
that  particular  line  of  business  in  which  the  plaintiff  has  long  used 
it,  and  in  which  the  public  has  come  to  associate  this  name  solely 
with  the  plaintiff. 

rightly  use  his  own  name.    I  cannot  another  man  must  not  use  his  own 

conceive  that  the  law  is  such.    If  the  name.    If  that  other  man  comes  and 

law  were  such,  the  law  would  be  most  carries  on  business  he  must  discard  his 

extraordinary  and,  to  my  mind,  most  own  name  and  take  a  false  name.    The 

unjust,  to  prevent  a  man's  using  his  proposition  seems  to  me  so  monstrous, 

own  name.    And  I  must  say  this,  that  that  the  statement  of  it  carries  its 

all  the  arguments  which  have  been  own  refutation.    Therefore,  upon  prin- 

used  in  this  case  would  have  been  ciple,  I  should  say  it  is  perfectly  clear 

equally  applicable  if  there  had  been  that  if  all  that  a  man  does  is  to  carry 

nothing  about  sons,  and  if  one  man  on  the  same  business,  and  to  state 

were  carrying  on  business  as  Thomas  how  he  is  carrying  it  on,  that  state- 

Turton   under   the   circumstances   in  ment  being  the  simple  truth,  and  he 

which  Thomas  Turton  &  Sons  were  does  nothing  more  with  regard  to  the 

carrying  on  their  business,  and  an-  respective    names,    he    is    doing    no 

other  man  named  John  Turton  were  wrong.     He  is  doing  what  he  has  an 

to  come  and  carry  on  his  business  sim-  absolute  right  by  the  law  of  England 

ply  in  his  own  name.    Therefore  the  to  do,  and  you  cannot  restrain  a  man 

proposition  goes  to  this  length:  that  from   doing   that   which   he   has   an 

if  one  man  is  in  business  and  has  so  absolute  right  by  the  law  of  England 

carried  on  his  business,  that  his  name  to  do"  (at  pp.  135-36). 
has  become  a  value  in  the  market. 


124       Family  Names  or  Surnames,  as  Trade  Names 

In  1875,  twenty-two  years  after  Burgess  v.  Burgess,  the  New 
York  Court  of  Appeals  decided  Meneely  v.  Meneely?  The  sub- 
stance of  that  case  is  stated  })y  Andrews,  J.,  in  Higgins  v.  Higgins 
Soap  Co.,  ^^  thus:  "any  i)erson  may  use  in  his  business  his  family 
name,  provided  he  uses  it  honestly  and  without  artifice  or  de- 
ception, although  the  business  he  carries  on  is  the  same  as  the 
business  of  another  person  of  the  same  name  previously  estab- 
lished, which  has  become  known  under  that  name  to  the  public, 
and  although  it  may  appear  that  the  repetition  of  that  name 
in  connection  with  the  new  business  of  the  same  kind,  may 
produce  confusion  and  subject  the  other  party  to  pecuniary  in- 
jury. The  right  of  a  person  to  use  his  family  name  in  his  business 
is  regarded  as  a  natural  right  of  which  he  cannot  be  deprived,  by 
reason  simply  of  priority  of  use  by  another  of  the  same  name." 

§  70.  Explanatory  Phrases  as  a  Means  of  Eliminating  Con- 
fusion in  Family  Names.  —  The  rule  as  it  exists  to-day  in  the  con- 
servative jurisdictions  is  stated  by  the  Circuit  Court  of  Appeals 
in  Wyckoff,  Seamans  &  Benedict  v.  Howe  Scale  Co.,^  as  follows: 
''No  one  may  be  excluded  from  taking  up  whatever  business  he 
chooses  by  the  circumstance  that  someone  else  of  the  same  name 
has  made  a  reputation  in  it;  nor  may  he  be  required  to  conduct 
such  business  under  an  alias,  although  the  conducting  of  it  under 
his  own  name  may  produce  a  confusion  in  the  public  mind  as  to 
the  identity  of  goods,  which  no  'precaution  or  indication'  of  his 
can  effectually  prevent.  It  is  through  no  fault  of  his  that  his 
name  happens  to  be  the  same  as  that  of  some  other  man,  who  has 
already  impressed  his  personality  on  some  particular  industry. 
All  that  is  required  of  him  is  that  he  shall  use  reasonable  precau- 
tions to  prevent  confusion ;  that  he  shall  refrain  from  any  affinna- 
tive  act  which  may  produce  it.  Thus  doing  and  thus  refraining, 
he  may  do  business  under  the  name  that  came  to  him  without  his 
choice,  and  may  call  his  goods  by  it,  if  he  pleases." 

There  is,  however,  something  abhorrent  to  justice  and  com- 
mon sense  in  allowing  one  who  has  built  up  a  profitable  busi- 
ness to  suffer  severe  loss  of  money  and  trade,  because  another 
who  happens  to  enter  the  business  later  has  inherited  the  same 
name  as  he.  Such  an  idea  is  opposed  to  the  American  and  English 
idea  of  fair  play.    The  courts  have  experienced  this  feeUng  and 

'  62  N.  Y.  427-1875.  « 122  Fed.  348-51-1903;  58  C.  C. 

'"  144  N.  Y.  462.  A.  510. 


Explanatory  Phrases  125 

have  in  numerous  instances  tried  to  prevent  the  injury,  at  the 
same  time  trying  to  uphold  the  unquaUfied  right  of  the  defendant 
to  the  use  of  his  own  name,  going  even  farther  than  the  court  went 
in  Wyckoff  v.  Howe  Scale  Co.,  supra.  In  recent  years,  it  has  been 
common  for  the  courts  to  dispose  of  cases  where  a  common  family 
name  was  being  used  by  defendant  to  the  injury  of  plaintiff,  by 
allowing  the  defendant  to  use  his  name,  but  only  in  such  ways  as 
would  not  give  occasion  for  purchasers  being  deceived  into  think- 
ing the  goods  on  which  it  appeared  were  those  of  the  plaintiff,  and 
thus  giving  relief  to  the  plaintiff  without  forbidding  anyone  to  use 
his  own  name.  In  other  instances  the  court  has  ordered  that  the 
defendant  use  his  full  name  instead  of  merely  his  surname,  as 
where  two  "Hoffs"  manufactured  malt  extract,  Leopold,  being 
later  in  beginning  business  than  Johann,  was  ordered  to  prefix 
his  first  name  to  all  his  labels.  This,  however,  is  not  usually 
considered  a  sufficient  differentiation.^ 

A  very  good  illustration  of  the  present  attitude  of  the  courts 
is  found  in  the  cases  brought  by  the  Walter  Baker  Chocolate  Co. 
against  various  persons  by  the  name  of  Baker,  who  have  set  up  in 
the  chocolate  business  from  time  to  tune.  The  following  summary 
is  taken,  in  part,  from  the  Trade-Mark  Bulletin,  for  1905.    The 

«  Tarrant  &  Co.  v.  Johann  Hoff,  Royal  Baking  Powder  Co.  v.  Royal 
76  Fed.  959-1896;  22  C.  C.  A.  644.  122  Fed.  337-1903;  58  C.  C.  A.  499- 
"  Complainant  acquired  the  right  to  506.  "  Now,  if  defendant  did  not  bear 
manufacture  and  sell  in  the  United  thefamily  name  of  Royal '.there  would 
States  'Johann  Hoff's  Malt  Extract'  not  be  the  slightest  doubt  but  that  his 
under  labels  and  trade-marks  used  in  use  of  the  word  '  Royal '  in  connection 
Germany  for  many  years,  and  which  with  a  baking  powder  made  and  sold 
entered  into  commerce  under  the  by  himself  would  be  absolutely  pro- 
name  'Johann  Hoff's'  or  simply  hibited,  upon  the  ground  that  the 
'Hoff's'  extract.  Defendant  became  use  of  so  arbitrary  and  meaningless  a 
the  selling  agent  for  a  malt  extract  word  applied  to  a  baking  powder 
manufactured  by  Leopold  Hoff  in  could  only  be  with  the  dishonest  in- 
Germany,  using  the  words,  'Hoff's  tent  to  appropriate  to  himself  some 
Malt  Extract'  on  its  labels  and  ad-  of  the  benefits  resulting  from  the  de- 
vertisements,  affixing  also  a  perpen-  mand  for  the  Royal  baking  powder 
dicular  side  label,  'Manufactured  by  made  and  sold  by  the  complainant" 
Leopold  Hoff.'  Held,  that  defendant  (id.  p.  343).  The  defendant  was  or- 
should  be  enjoined  from  using  the  dered  to  distinguish  his  goods  from 
words  'Hoff's  Malt  Extract,'  unless  those  of  complainant,  and  make  his 
preceded  by  the  word  'Leopold,'  and  name  inconspicuous, 
that  the  perpendicular  label  was  in- 
sufficient"   (headnote). 


126       Family  Names  or  Surnames,  as  Trade  Names 

business  of  Walter  Baker  &  Co.  was  begun  in  1780,  at  Dorchester, 
Mass.  For  more  than  fifty  years  it  had  been  conducted  under  its 
present  name.  In  1894,  WiUiam  H.  Baker,  of  Winchester,  Va., 
began  to  market  chocolate  put  up  and  labeled  with  the  name 
"W.  H.  Baker  &  Co.,"  so  as  to  cause  his  goods  to  be  called  for, 
sold  and  accepted  as  the  goods  of  "Walter  Baker  &  Co.,"  whose 
goods  were  marked  "W.  Baker  &  Co.,"  thereupon,  Walter  Baker 
sued  William  H.  Baker,  and  his  New  York  agent,  Sanders,  to 
enjoin  them  from  using  the  name  "Baker."  In  the  suit  against 
Baker,  the  Circuit  Court  in  the  Western  District  of  Virginia,  ^° 
while  refusing  to  enjoin  the  defendant  from  using  his  own  name, 
enjoined  him  from  using  the  name  "Baker "  alone  or  in  connection 
with  the  designation  "&  Co."  and  required  him  to  use  it  in  some 
distinctive  manner. 

In  the  suit  against  Sanders  in  the  Circuit  Court  of  Appeals, 
Second  Circuit,  an  injunction  was  granted  which  specified  the 
manner  in  which  the  goods  in  controversy  should  be  marked,  and 
required  the  defendant  to  place  upon  his  packages  in  prominent 
type  the  words,  "W.  H.  Baker  is  distinct  from  and  has  no  con- 
nection with  the  old  chocolate  manufactory  of  Walter  Baker  & 
Company."  ^^ 

The  next  suit  was  brought  by  Walter  Baker  &  Co.  against 
William  P.  Baker,  of  New  York,  and  restrained  him  from  using 
the  name  "Baker"  alone,  in  the  sale  of  chocolate,  or  from  using 
it  with  the  initial  "W."  only,  but  providing  that  he  might  use 
his  name  in  full,  "William  P.  Baker"  or  "William  Phillips  Baker" 
and  might  indicate  in  appropriate  language  upon  the  packages  of 
his  goods  that  they  were  made  and  prepared,  or  sold  by  William  P. 
Baker,  of  New  York."  '' 

In  the  next  series  of  two  cases,  William  H.  Baker,  of  Win- 
chester, Va.,  appeared  as  complainant.  It  appeared  that  one 
William  H.  Baker,  of  Syracuse,  N.  Y.,  had  now  begun  to  trade 
upon  the  reputation  of  the  former  infringer,  WilHam  H.  Baker, 
of  Winchester,  Va.,  and  was  using  upon  his  packages  the  same 
form  of  marking  which  the  court  had  required  the  latter  dealer 
to  place  upon  his,  to  wit,  "Wm.  H.  Baker  is  distinct  from  the 

'«  Waller  Baker  &  Co.,  Lid.,  v.  Sanders,  80  Fed.  889-1897;  26  C.  C. 
Baker,  77  Fed.  181-1896.  A.  220. 

■^Waller    Baker    &    Co.,    Ltd.,    v.  ^"^  Waller  Baker  &  Co.,  Ltd.,  v.  Baker, 

87  Fed.  209-1898;  C.  C.  S.  D.  N.  Y. 


Explanatory  Phrases  127 

old  chocolate  manufactory  of  Walter  Baker  &  Co.,"  thereby 
making  it  appear  that  he  was  the  ''William  H.  Baker"  who  had 
been  enjoined  at  the  suit  of  Walter  Baker  &  Co.  Thereupon, 
William  H.  Baker,  of  Winchester,  Va.,  brought  suits  against 
WiUiam  H.  Baker,  of  Syracuse,  and  also  against  Sanders,  now  the 
agent  of  the  latter,  to  compel  them  to  desist  from  the  use  of  this 
marking.  In  the  suit  against  Sanders  such  injunction  was  granted, 
and  also  an  injunction  requiring  the  defendant  to  desist  from  the 
use  of  the  name  in  the  fonn  " W.  H.  Baker,"  or  '*Wm.  H.  Baker," 
but  permitted  him  to  use  the  full  name,  ''William  H.  Baker"  in 
connection  with  the  word,  "Syracuse"  when  the  same  were 
printed  in  type  of  sufficient  prominence. ^^  In  the  suit  against 
Baker,  of  Syracuse,  a  similar  decree  was  made.^^ 

In  another  of  the  series,  Walter  Baker  &  Co.,  as  complain- 
ants, sought  to  restrain  the  defendant,  Slack,  a  retail  grocer,  of 
Chicago,  from  advertising  the  goods  of  William  H.  Baker,  of 
Winchester,  Va.,  as  "Baker's  Chocolate"  and  "Baker's  Cocoa" 
and  from  selling  them  to  customers  who  asked  for  "Baker's 
Chocolate"  or  "Baker's  Cocoa." 

The  relief  awarded  was  an  injunction  preventing  the  defend- 
ant from  advertising,  selling  or  causing  to  be  sold  any  choco- 
late or  cocoa  other  than  that  of  the  complainant  as  or  under  the 
names  "Baker's  Chocolate"  or  "Baker's  Cocoa,"  and  from  using 
the  name  "Baker"  alone  in  any  way  whatever  in  connection  with 
the  advertisement  or  sale  of  chocolate  or  cocoa  other  than  that  of 
Walter  Baker  &  Co.,  or  in  any  way  so  as  to  indicate  that  the  goods 
of  the  Virginia  manufacturer  were  "Baker's  Chocolate"  or 
"Baker's  Cocoa."  '' 

In  1911,  still  another  "Baker"  case  was  decided  by  the  Circuit 
Court  of  Appeals,  Eighth  Circuit.^"  Here  the  defendant  was  a 
retailer,  who  sold  both  the  original  Baker  product  and  that  of 
"WilUam  H.  Baker,  Syracuse,  Inc."  He  was  charged  with  sell- 
ing both  brands  indiscriminately  as  "Baker's"  and  "Baker's 
Cocoa."  "William  H.  Baker,  Syracuse,  Inc.,"  conformed  his 
package  to  the  rules  laid  down  by  various  courts  in  other  "Baker" 

"  William  H.  Baker  v.  Sanders,  97  i^  Walter    Baker    &    Co.,    Ltd.,    v. 

Fed.  948-1899  (C.  C.  E.  D.  Pa.).  Slack,  130  Fed.  514-1904  (65  C.  C.  A. 

'*  William  H.  Baker  v.  Baker,  115  138,  7th  Cir.). 

Fed.  297-1902  (53  C.  C.  A.  157,  2d  '«  Walter  Baker  &  Co.,  Ltd.,  v.  Gray, 

Cir.).  192  Fed.  921, 


128       Family  Names  or  Surnames,  as  Trade  Names 

cases,  so  that  his  products  did  not  unfairly  resemble  that  of  the 
plaintiff.  This  case  is  an  application  of  the  doctrine  of  caveat 
eviptor.  The  court  held  "that  defendants'  right  to  offer  their 
goods  to  the  trade  as  '  Baker's '  goods  is  equal  to  that  of  complain- 
ant's right  to  so  offer  its  goods,  and  that  defendants  having  fully 
comi)lied  with  the  law  obligating  them  to  so  dress  their  goods  as 
to  prevent  confusion  and  enable  purchasers  when  exercising  rea- 
sonable care  to  distinguish  between  them  and  the  goods  of  others 
of  the  same  name,  have  done  their  full  duty  either  to  the  public  or 
to  the  complainant." 

This  decision  has  not  been  widely  approved.  It  seems  to  over- 
look the  important  fact,  that  commercial  considerations  often 
demand  that  the  manufacturer  change  the  form  and  appearance  of 
his  package:  that  this  fact  is  known  to  the  public,  and  buyers, 
therefore,  place  little  reliance  on  these  features  but  look  for  the 
name.  This  decision  would  seem  to  overlook  the  further  fact  that, 
while,  as  the  court  says,  a  dealer  is  not  in  duty  bound  to  advertise 
the  original  brand,  he  is  in  duty  bound  to  sell  his  goods  openly 
for  what  they  are :  and  when  inquiry  is  made  which  is  obviously 
ambiguous  as  to  which  of  two  brands  the  customer  seeks  it  is  the 
shop  keeper's  duty  to  find  out  which  brand  the  customer  seeks, 
before  offering  his  goods. 

Another  good  illustration  of  the  unsatisfactory  condition  of  the 
law  relating  to  family  names  is  found  in  the  Rogers  cases.  The 
name  Rogers  has  come  to  be  associated  in  a  peculiar  way  with 
the  manufacture  of  silver.  The  first  Rogers  business  was  started 
in  1872  by  Rogers  Brothers,  who  stamped  their  goods  "Wm. 
Rogers  Manufacturing  Co."  and  "  Wm.  Rogers  &  Son."  Various 
persons  who  bore  the  name  "Rogers"  have,  from  time  to  time, 
set  up  in  the  silver  business,  under  the  name  of  "Rogers,"  only  to 
be  curtailed  and  limited  by  the  courts  in  the  use  of  the  name. 

In  1883,  George  Rogers,  a  lawyer,  and  others  started  the 
"Rogers  Manufacturing  Co."  and  sold  silver  as  "6  Rogers  A-1." 
Held,  defendants  intended  by  so  using  their  name  to  deceive  the 
pubUc." 

"  WiUiam  Rogers  Mfg.  Co.  v.  Rog-  ing  silver  plate  which  had  long  been 

ers  Mfg.  Co.,  16  Phila.  178  (Com.  PI.  carried  on  by  three  brothers  named 

Phila.  1883).    The  plaintiff  company  Rogers  and  their  successors.     Their 

was  incorporated  in   1872,   and  sue-  goods  were  stamped  with  the  name 

ceeded  to  a  business  of  manufactur-  "Wm.  Rogers  Mfg.  Co."  or  "Wm. 


Explanatory  Phrases 


129 


In  1907,  William  H.  Rogers  started  in  the  silver  business,  mark- 
ing goods  "W.  H.  Rogers,  of  Plainfield,  New  Jersey,"  and  his 
packages  "Not  connected  with  any  other  Rogers."  Com*t  held, 
this  was  not  sufficient  identification.  He  must  mark  his  goods 
''Not  the  original  Rogers,"  "Not  connected  with  the  original 
Rogers."  ^^ 


Rogers  &  Son,"  and  the  name  Rogers 
had  long  been  identified  with  these 
goods,  which  were  of  high  reputation. 
The  defendant  company  was  formed 
in  1883  by  George  Rogers,  a  lawyer, 
George  Linsenmayer,  a  silversmith, 
and  another,  and  it  stamped  its  goods 
"6  Rogers  A-1."  The  court  con- 
sidered that  in  adopting  its  name,  de- 
fendant intended  to  mislead  the  pub- 
lic. Defendant  was  enjoined  from 
using  the  name  "Rogers"  on  its 
ware.  The  court,  with  reference  to 
the  proposition  that  in  general  any 
man  may  apply  his  own  name  to  the 
goods  in  which  he  deals,  says:  "But 
if  the  use  of  the  name  is  intended  to 
gain  an  advantage  over  anyone  al- 
ready estabhshed,  and  using  it  in  the 
same  trade,  or  if,  without  such  intent, 
the  effect  is  to  mislead  and  deceive 
buyers,  then  such  use  of  the  name  will 
be  prevented  by  injunction;  and 
while  all  intendments  are  made  in  fa- 
vor of  a  person  formerly  in  the  trade, 
when  he  sets  up  a  new  firm,  yet  the 
presumptions  are  against  a  stranger 
to  the  business,  when  he  sets  up  a 
rival  establishment"  (p.  179). 

1^  hiternaiional  Silver  Co.  v.  Rog- 
ers, 72  N.  J.  Eq.  933;  67  Atl.  105- 
1907.  Complainant  was  the  successor 
to  the  good-will  of  an  extensive  busi- 
ness in  silver-plated  ware  originally 
established  by  the  Rogers  Brothers, 
by  whose  surname  the  goods  had  long 
been  generally  known.  Defendant, 
W.  H.  Rogers,  had  been  the  presi- 
dent of  a  rival  concern,  the  William 
H.    Rogers    Corporation    which    had 


been  enjoined  from  the  use  of  any 
name  of  which  "Rogers"  was  a  part. 
Defendant  then  set  up  in  business  in 
his  own   name,   stamping  his  goods 
"W.  H.  Rogers,  of  Plainfield,  N.  J.," 
and  marking  his  packages  "not  con- 
nected with  any  other  Rogers."    Held, 
that  this  was  not  a  sufficient  differ- 
entiation, and  that  defendant  should 
be  enjoined  from  making  and  selling 
his   goods,   unless   he   should   stamp 
upon  them  "not  the  original  Rogers" 
or  "not  connected  with  the  original 
Rogers."     "The  normal  presumption 
that   the   use   of   one's   name   is   an 
honest  one  may  be  rebutted  by  show- 
ing a  fraudulent  use  of  it  touching 
the  matter  in  issue."     (Referring  to 
the  fact  that  such  fraudulent  prior 
use  was  here  estabhshed,  the  court 
proceeds:)   "The  burden  is  therefore 
on  the  defendant  to  show  that  the 
use  of  liis  name  is  not  in  effect  a  con- 
tinuation of  such  prior  fraud"    (id. 
p.    106).     As   to   the   differentiating 
effect  of  the  addition  to  defendant's 
name  of  the  place  of  manufacture, 
the  court  remarks  that  the  original 
Rogers'  goods  had  been  manufactured 
in  various  places  and  says:  "Locality 
has  no  sufficiently  distinguishing  force, 
because  locality  is  not  associated  in 
any  way  with  the  mark  itself."    As  to 
defendants'  use  of  the  words  "Not 
connected  with  any  other  Rogers"  on 
the  wrappers,  the  court  remarks  that 
these  words  would  not  reach  the  retail 
purchaser,  and  adds  that  even  if  they 
do  they  would  not  suffice.     "These 
words  merely  tend  to  add  to  the  conf  u- 


130       Family  Names  or  Surnames,  as  Trade  Names 


William  H.  Rogers,  a  bicycle  maker  at  Bristol,  began  to  make 
silver  stamped  "Wm.  H.  Rogers."  One  Hubbard  furnished  all 
the  capital.  Held,  he  was  seeking  to  pass  off  his  goods  fraud- 
ulently, else  he  would  have  used  name  "Rogers  &  Hubbard." 
Defendant  was  enjoined  from  use  of  word  "Rogers"  associated 
in  any  way  with  word  ' '  William  "  or  abbreviation  of  it.  On  appeal 
the  court  granted  an  injunction  restraining  defendant  from  using 
the  word  "Rogers"  in  any  form.^^ 


sion.  They  might  well  be,  and  usually 
would  be,  employed  by  an  original 
manufacturer  seeking  to  warn  the 
trade  when  he  finds  on  the  market 
other  goods  which  may  be  passed  off  as 
his.  In  employing  such  words,  so 
misleading  and  ambiguous,  the  de- 
fendant is  clearly  guilty  of  bad  faith" 
(id.  p.  107). 

i»  International  Silver  Co.  v.  Wni. 
H.  Rogers  Corp.,  67  N.  J.Eq.646;  1905; 
60  Atl.  187,  reversing  66  N.  J.  Eq. 
119;  57  Atl.  1037-1904.  In  1890, 
William  H.  Rogers,  who  had  been  in 
the  bicycle  business,  began  to  make 
spoons  and  forks  through  a  company 
at  Bristol,  having  them  stamped 
"Wm.  H.  Rogers  Co."  In  this  ven- 
ture he  was  at  first  with  one  Hubbard, 
who  furnished  all  of  the  capital.  The 
vice-chancellor  held,  that  he  was 
evidently  seeking  to  pass  off  his  goods. 
Had  he  not  been  he  would  have  used 
the  name  "Rogers  &  Hubbard."  The 
name  he  did  use  was  strikingly  hke 
the  name  of  a  company  then  in  exist- 
ence, the  "Wm.  H.  Rogers  Manufac- 
turing Co."  He  had  no  skill  or  repu- 
tation in  the  market  as  a  dealer  in 
silver  nor  any  financial  responsibility. 
He  had  little  part  in  the  business 
and  yet  the  B.  Company  were  will- 
ing to  pay  five  cents  per  dozen  over 
the  manufactjurer's  price  for  knives 
stamped  with  his  name.  This  would 
only  have  represented  the  value  of  the 
name  and  reputation  of  the  predeces- 


sors of  the  complainant.  He  was 
seeking  to  pass  off  his  goods  as  the 
goods  of  his  competitor.  A  man  is  not 
always  debarred  from  giving  his  own 
name  to  a  corporation,  where  it  hap- 
pens to  be  the  name  of  the  competitor. 
If  he  did  it  for  some  good  reason  and 
in  such  a  way  as  not  to  mislead  the 
public,  his  name  may  be  of  value  to 
him  because  it  suggests  his  skill  or  his 
financial  abihty  or  something  else  that 
belongs  to  him.  In  this  case,  there  was 
no  valid  reason  why  the  individual 
name  should  have  been  adopted  as  a 
corporate  name,  and  further  the  name 
was  not  embodied  in  the  corporate 
name  merely,  but  in  its  most  objec- 
tionable form  with  the  abbreviation 
"Wm.,"  just  as  in  the  corporate  name. 
For  this  the  court  held  that  there  was 
not  any  excuse.  The  gravamen  of  the 
action  was  not  fraudulent  intent  but 
misrepresentation,  the  siiggcdio  falsi  is 
to  be  found  in  the  name  stamped  on 
the  ware.  The  W.  H.  Rogers  corpora- 
tion should  be  enjoined  from  adver- 
tising its  wares  under  the  corporate 
name  or  unrler  any  name  in  which  the 
word  "Rogers,"  with  the  word  "Wil- 
liam" abbreviated  or  unabbreviated, 
is  a  part,  or  from  selling  its  wares 
under  that  name. 

On  appeal  Swayze,  J.,  said: 
"We  think  he  (the  vice-chancellor) 
erred  in  refusing  to  enjoin  the  defend- 
ant from  using  the  word  "Rogers"  in 
any  form,  even  as  a  part  of  the  cor- 


Explanatory  Phrases 


131 


In  1901,  a  corporation  was  formed  by  Simeon  L.  and  George 
H.  Rogers,  sons  of  one  of  the  original  Rogers  Brothers,  but  neither 
of  them  had  active  control  of  the  business.  They  advertised  their 
ware  as  "The  Real  Rogers  goods,"  etc.  They  were  enjoined  from 
using  the  word  "Rogers"  or  "Rogers  Bros."  or  stating  their  goods 
were  "The  Real  Rogers  goods"  or  that  they  were  "the  only 
real  Rogers  Bros."  ^    This  was  on  the  preliminary  hearing. 


porate  defendant's  name,  in  connec- 
tion with  the  manufacture  and  sale 
of  silver-plated  table  ware,  carried 
on  by  or  on  behalf  of  the  corporate 
defendant." 

"The  vice-chancellor  cited  Baker  v. 
Baker,  115  Fed.  Rep.  297,  as  sustaining 
the  defendant's  right  to  use  William 
H.  Rogers'  name,  when  properly  dis- 
tinguished, in  view  of  the  skill  and 
experience  he  may  have  acquired  in 
the  business.  To  this  there  are  two 
answers:  (1)  That  skill  and  experience, 
such  as  it  was,  was  acquired  in  his 
effort  to  profit  by  the  reputation  of  the 
complainant's  goods.  As  the  vice- 
chancellor  said:  'The  conclusion  is 
inevitable  that  up  to,  or  nearly  up  to, 
the  time  of  the  formation  of  the  Rogers 
corporation,  Rogers  was  using  the 
name  to  gain  for  himself  a  profit  which 
belonged  to  another.  He  was  con- 
sciously seeking  to  pass  off  his  goods 
as  the  goods  of  his  competitor.'  We 
cannot  think  that  a  man  who  acquires 
skill  and  experience  under  such  cir- 
cumstances is  entitled  to  protection 
against  those  whom  he  has  sought  to 
injure.  (2)  The  case  differs  from  the 
Baker  case.  There  the  defendant 
changed  his  business  methods,  adopted 
advertisements,  packages  and  labels 
which  met  with  the  approval  of  the 
successors  of  Walter  Baker  &  Com- 
pany, and  so  differentiated  the  dress 
of  his  products  as  to  minimize  as  far 
as  possible  the  risk  of  confusion  be- 
tween them  and  those  of  the  com- 


plainant. A  part  of  the  corporate 
name  was  the  place  of  business,  and 
every  person  who  dealt  with  the  de- 
fendant in  that  case  was  thereby  noti- 
fied that  its  business  domicile  was  not 
the  domicile  of  the  complainant. 
After  reciting  these  facts,  the  court, 
in  that  case,  added :  *  If  the  name  had 
been  selected  unnecessarily  or  for  the 
purpose  of  illegitimate  competition 
with  the  complainant,  we  should  not 
hesitate  to  enjoin  its  use.  But  it  was 
selected  without  any  element  of  bad 
faith  or  unfair  use.*  In  the  present 
case  the  corporate  name  was  selected 
unnecessarily,  with  the  intent  to  make 
an  unfair  use  of  it." 

20  International  Silver  Co.  v.  Simeon 
L.  &  George  H.  Rogers  Co.,  110  Fed. 
955-1901  (C.  C.  Conn.).  Defendant 
was  a  corporation  recently  organized 
to  make  silver-plated  ware.  Simeon 
L.  and  George  H.  Rogers,  after  whom 
it  was  named,  were  sons  of  one  of  the 
original  Rogers  brothers,  but  neither 
had  been  engaged  in  the  manufacture 
of  silver-plated  ware,  though  one  had 
been  employed  in  the  business  at  small 
wages.  Neither  of  the  active  man- 
agers of  the  defendant  corporation 
was  a  Rogers.  Defendant  advertised 
their  goods  as  "The  real  Rogers 
goods,"  and  represented  Simeon  L. 
and  George  Rogers  as  "the  only  real 
Rogers  Brothers."  Held,  that  de- 
fendant should  be  restrained  by  pre- 
liminary injunction  from  stamping  its 
goods  "Rogers",  or  "Rogers  Bros." 


132       Family  Names  or  Surnames,  as  Trade  Names 

In  the  past  few  years  the  owners  of  a  number  of  very  old  Amer- 
ican business  names  have  appealed  to  the  courts  for  protection 
against  what  seemed  to  be  unfair  use  of  these  names  by  others. 
"Knabe,"  ''Chickering"  and  ''Waterman"  ^^  are  examples  of 
such  names.  Each  of  these  cases  was  considered  by  a  different 
tribunal.  All  agreed  that  a  man  could  not  be  deprived  abso- 
lutely of  the  right  to  use  his  own  name  even  in  one  hne  of  business, 
because  of  unfair  acts  on  his  part.  All  agreed  that  every  man 
must  use  his  name  so  as  not  to  deceive;  but  no  two  agreed  as  to 
any  specific  rule  governing  the  method  of  limiting  such  use  by 
competitors.  None  of  these  courts  devised  a  remedy  which 
would  seem  to  give  adequate  protection  to  any  of  these  com- 
plainant concerns. 

The  law  on  this  question  as  usually  applied  at  the  present  time 
is  thus  stated  by  Rose,  J. : 

"One  man  may  have  long  been  engaged  in  the  production 
and  sale  of  a  particular  kind  of  wares.  He  may  have  been  the 
only  person  of  that  name  who  made  or  sold  them.  They  may 
have  acquired  a  widespread  and  valuable  reputation.  Any  goods 
with  which  a  like  surname  may  be  used  will  be  taken  for  his. 
Nevertheless,  any  man  who  has  that  surname  may  go  into  the 
same  business  and  offer  the  Hke  goods  for  sale.  A  good  deal  of 
confusion  will  necessarily  follow.    The  first  comer  will  suffer  from 

either  with  or  without  an  accompany-  ufactured  by  the  Muskegon  Cutlery 
ing  emblem,  monogram  or  initials,  Co.,  and  stamped  them  with  the  name 
and  from  representing  its  goods  to  be  "RoDgers  Bros.  Cutlery  Co."  (cap- 
"The  real  Rogers  goods,"  and  the  itaUzing  the  d).  Held,  that  the  de- 
manufacturers  to  be  "the  only  real  fendants'  use  of  the  name  was  prima 
Rogers  Bros."  The  court  postponed  Jade  fraudulent.  Prehminary  injunc- 
until  a  final  hearing  the  determination  tion  granted.  See  also  International 
of  the  question  whether  or  not  defend-  Silver  Co.  v.  Wm.  H.  Rogers  Corp.,  67 
ant  should  be  enjoined  from  the  use  N.  J.  Eq.  646-1905;  60  Atl.  187,  re- 
of  its  corporate  name,  as  having  been  versing,  66  N.  J.  Eq.  119;  57  Atl.  1037; 
adopted  solely  for  the  purpose  of  International  Silver  Co.  v.  Rogers,  67 
unfair  competition.  Atl.  105-1907;  72  N.  J.  E.  933,  re- 
Inter national  Silver  Co.  v.  Rodgers  versing  63  Atl.  977;  International 
Bros.  Cutlery  Co.,  136  Fed.  1019-1905  Silver  Co.  v.  Wm.  G.  Rogers,  113 
(C.  C.  W.  D.  Mich.  5th  D.).  The  dc-  Fed.  526-1902,  affirmed,  118  Fed. 
fendant  company  was  formed  by  two  133-1902. 

persons  of  the  name  of  Rodgers,  and  "  ^tix,  Baer  &  Fidler  Dry  Goods  Co. 

another  person,  and  did  not  itself  man-  v.  American  Piano  Co.,  211  Fed.  271- 

ufacture,  but  bought  and  sold  cutlery.  1913;  Waterman  v.  Modern  Pen  Co., 

It  placed  upon  the  market  knives  man-  235  U.  S.  88-1914. 


Inadequacy  of  Explanatory  Phrase  Rule  133 

it.  If  the  second  does  nothing  unnecessarily  to  increase  the 
difficulty  of  distinguishing  his  goods  from  those  of  his  predecessor, 
the  latter  will  not  be  heard  to  complain."- 

We  believe  that  the  time  must  soon  come  when  a  way  will  be 
found  by  which  reputation  and  good-will  fairly  and  honorably 
acquired  by  long  continued  fair  deahng  will  be  adequately  pro- 
tected, which  it  is  not  to-day. 

§  71.  The  Inadequacy  of  the  Explanatory  Phrase  Rule.  —  The 
use  of  explanations  with  family  names  in  cases  where  the  de- 
fendant is  found  to  have  used  his  name  to  the  injury  of  older 
concerns  has  very  grave  objections.  The  defendant  who  de- 
liberately so  uses  his  name  as  to  sell  his  goods  on  the  reputation 
and  celebrity  of  a  competitor  commits  a  fraud.  In  so  doing  he  has 
abused  his  right  to  use  his  name.  He  who  abuses  his  right  to 
liberty,  loses  it,  for  a  time  at  least,  sometimes  permanently.  He 
who  abuses  his  rights  and  privileges  as  a  husband  or  parent  may 
lose  them.  He  who  abuses  his  rights  in  many  relations  of  life  is 
compelled  by  law  to  give  them  up.  It  is  difficult  to  see  how  the 
right  to  the  use  of  one's  name  is  more  sacred  than  various  other 
personal  rights.  Repeatedly  we  find  the  rule  stated  in  substance 
thus:  ''every  one  has  a  right  to  the  free  use  of  his  own  name." 
There  is  grave  doubt  if  any  such  absolute  right  exists.  The  only 
right  one  has  in  his  name  is  the  right  to  use  it  honestly  and 
FAIRLY.  As  said  by  Gerard,  J.,  if  one  "cannot  use  his  own  name 
without  representing  his  goods  as  those  of  another,  then  he  cannot 
use  his  own  name  at  all "  —  meaning  of  course  in  the  one  particular 
line  of  business  in  connection  with  which  the  abuse  of  the  name 
had  occurred.-^ 

Doubtless  the  theory  of  many  of  the  decisions  on  this  subject, 
is  that  an  explanation  converts  a  dishonest  use  of  a  name  into  an 
honest  one.  This  is  true  only  in  cases  where  the  explanation 
actually  reaches  the  buyer  of  the  article.  It  is  by  no  means  nec- 
essarily the  fact  that  every  purchaser  of  defendant's  article 
reads  and  understands  the  explanation.  One  court  has  directed 
that  a  defendant  shall  stand  upon  his  pianos,  when  exhibited  for 

**  Brown  Chemical  Co.  v.  Meyer,  139  Burgess,  17  Eng.  Law  &  Equity,  257; 

U.  S.  540,  11  Sup.  Ct.  625;  35  L.  ed.  Guth  Chocolate  Co.  v.  Gidh,  215  Fed. 

247;  Ho^ve  Scale  Co.  v.  Wyckoff,  Sea-  750-765. 

wans  &  Benedict,  198  U.  S.  118;  25         ^^  Kaufman  v.  Kaufman,  123  N.  Y. 

Sup.  Ct.  609;  49  L.  ed.  972;  Burgess  v.  Supp.  699. 


134      Family  Names  or  Surnames,  as  Trade  Names 

sale^  a  large  sign  explaining  that  they  are  not  the  product  of  plain- 
tiff (the  assumption  of  course  being  that  without  the  sign  such 
impression  would  be  conveyed  by  the  piano  itself).  Such  a 
decree  gives  no  adequate  protection  to  the  plaintiff,  for  if,  without 
the  sign,  it  will  be  confused  with  the  plaintiff's  products,  once  it 
is  sold  and  the  sign  removed,  it  remains,  during  its  long  life  a 
constant  and  continuous  injury  to  the  plaintiff,  if  it  is  of  poorer 
quality  than  plaintiff's  product. 

The  explanatory  phrase  remedy  was  adopted  and  applied  in 
Chickering  v.  Chickering  &  Sons.^^  Defendants  were  using  their 
own  surnames,  and  yet  they  were  required  to  do  more  than  to 
use  with  it  their  first  names  or  initials.  They  were  not  to  de- 
scribe the  pianos  as  ''Chickering"  pianos,  and  that  name  was 
to  be  distinctly  subordinated  in  the  marking  of  the  pianos.  As  the 
best  practical  means  of  protecting  the  successor  to  the  original 
good-will,  without  undue  prejudice  to  the  later  comers,  it  was 
required  that  the  latter  should  adopt  a  uniform  name  for  all  their 
pianos  (such  as  '' Acoustigrande"),  and  make  that  the  conspicuous 
word  in  the  marking  [see  facsimile  in  report  of  case,  p.  493],  with 
permission  to  follow  it  with  the  name  of  the  makers,  in  smaller 
type,  together  with  the  place  of  manufacture,  which  was  different 
from  complainants'. 

This  requirement  of  a  conspicuous  uniform  name,  to  which 
''Chickering"  even  as  the  name  of  the  makers,  should  be  entirely 
subordinated  was  "strenuously  objected  to"  by  the  defendants 
[p.  497],  but  was  approved  by  a  unanimous  appellate  court,  which 
said  by  Mack,  C.  J.:  —  "If  defendants  were  permitted  to  use  the 
word  'Chickering'  or  'Chickering  Brothers'  on  the  fall  board, 
unaccompanied  by  any  other  name  and  without  the  usually  re- 
quired express  disclaimer  of  connection  with  complainants,  their 
piano  would  inevitably  be  known  as  the  'Chickering,'  and  the 
confusion  with  complainants'  piano  would  be,  as  it  has  been,  un- 
avoidable." 

In  Higgins  v.  Higgins,-'"  the  leading  authority  in  the  New  York 
Courts  on  this  question,  the  court  held  that  a  person  has  no 
right  whatever  to  cause  fraud  by  use  of  his  name  as  a  part  of  a 
corporate  title  and  that  he  may  be  enjoined  from  so  using  it. 
This  use  of  one's  own  name  is  denied  to  one  who  has  abused  it. 

2"  215  Fed.  400  (C.  C.  A.  7th  Ct.  "  144  N.  Y.  4G2;  39  N.  E.  490;  27 

1914).  L.  R.  A.  42. 


Inadequacy  of  Explanatory  Phrase  Rule  135 

According  to  most  authorities,  had  the  defendant  done  business 
under  his  personal  name  "Charles  S.  Higgins,"  instead  of  as  a 
corporation  "Charles  S.  Higgins  Co.",  he  could  not  have  been 
restrained  farther  than  to  be  required  to  use  explanatory  phrases 
or  words  with  his  name.  Admitting  that  a  name  when  used  by  a 
corporation  causes  fraud  it  is  idle  to  argue  that  if  used  by  a  part- 
nership, the  fraud  is  lessened  or  eliminated,  yet  under  present 
conditions  such  a  name  may  be  used  by  a  person  whose  name  it  is, 
or  a  partnership  of  which  he  is  a  member  with  an  explanation  re- 
gardless of  the  fraud  it  causes. 

Is  there  then  any  real  difference  between  the  right  to  use  one's 
family  name  by  itself  and  to  use  it  to  name  a  corporation?  The 
Supreme  Court  has  said  in  Waterman  v.  Modern  Pen  Co.:^^'' 
"There  is  no  distinction  between  corporations  and  natural 
persons  in  the  principle  which  is  to  prevent  fraud." 

Mr.  Wigmore  says  of  this  right  to  use  one's  family  name  as  a 
business  name:  "It  is  merely  the  right  to  obtain  patronage, 
for  wares  or  services,  by  the  use  of  the  mark  that  identifies 
our  personahty.  Now  this  right  can  never  have  any  superior 
claim  over  and  above  our  general  duty  to  obtain  patronage 
honestly."  ^"'' 

The  Waterman  case,^^  apparently  stands  for  the  proposition 
that,  regardless  of  the  depth  of  fraud  and  dishonesty  to  which  a 
defendant  may  have  stooped,  to  pass  off  his  goods  as  those  of 
another  to  his  profit,  if  the  medium  used  by  him  to  accomplish 
his  ends  is  his  own  name,  he  cannot  be  asked  to  do  more  than 
to  add  to  his  name  an  explanatory  phrase  which  may  or  may  not 
reach  the  attention  of  the  consumer. 

The  rule  protecting  the  right  to  one's  name  when  used  by  the 
person  himself  regardless  of  resulting  confusion,  and  the  rule  for- 
bidding use  of  a  name  as  a  corporate  name,  when  fraud  results 
as  in  the  Higgins  case  (supra),  cannot  both  be  accurate  or  salu- 
tary. One  enables  the  clever  substitute  to  succeed.  The  other 
compels  him  to  put  an  end  to  his  fraudulent  practices.  As  a 
practical  matter,  the  threat  has  been  made  more  than  once  by 
the  defendants  in  cases  involving  the  use  of  a  family  name  as  a 
part  of  a  corporate  name,  that  if  the  plaintiff  presses  the  case 
the  defendant's  business  will  be  continued  under  the  name  in 

""  235  U.  S.  88  (1916).  ^^  Waterman  v.  Modern  Pen  Co.,  235 

^^^  10  lU.  Law  Rev.  182-1916.  U.  S.  88;  35  Sup.  91-1914. 


13G       Family  Names  or  Surnames,  as  Trade  Names 

question  used  alone  or  as  a  partnership  name,  and  the  same  re- 
sults to  the  defendant  secured. 

That  the  remedies  now  given  in  unfair  competition  cases  are 
often  inadequate  from  a  commercial  standpoint  is  evident.  That 
they  give  as  effective  relief  as  they  do  is  quite  as  much  the  result  of 
the  widespread  aversion  to  litigation  on  the  part  of  the  defend- 
ants as  it  is  of  the  orders  of  the  court,  which  often  leave  open  to  de- 
fendants opportunities  to  continue  to  pass  off  their  goods  provided 
they  are  willing  to  change  the  form  of  their  business  organization. 
The  framing  of  an  explanatory  phrase  presents  a  wonderful  chance 
for  a  defendant  to  minimize  the  practical  effect  of  an  adverse  de- 
cision. This  is  well  illustrated  by  a  study  of  the  struggles  of 
the  L.  E.  Waterman  Pen  Co.,  the  Rogers'  silverware  interests 
and  the  makers  of  Baker  chocolate  to  preserve  their  good-will. 

The  effect  of  the  use  of  the  explanatory  phrase  rule  is  shown  by 
the  argument  of  counsel  for  the  defendant  in  Waterman  Co.  v. 
Modern  Pen  Co.,^^"'  who  excused  to  the  courts  their  clients'  acts  by 
saying  that:  "There  is  undoubtedly  some  sUght  confusion  owing 
to  the  similarity  of  names.  This  confusion  is  nothing  compared 
to  the  confusion  arising  from  the  names  of  the  twelve  firms  of 
Rogers  in  the  silverware  business."  Counsel  might  have  added 
that  this  widespread  confusion  in  the  silver  trade  is  caused  by 
concerns  operating  under  court  decrees  granted  in  cases  in  which 
the  original  Rogers  had  applied  for  relief. 

In  the  first  Baker  case  the  defendant  was  compelled  to  mark 
his  goods  "No  connection  with  the  old  chocolate  manufactory  of 
Walter  Baker  &  Co.,  Ltd."  In  this  connection,  one  Circuit  Court 
of  Appeals  said:  "In  the  market  there  were  no  two  'Bakers' 
products,'  2^  but  the  courts  have  failed  in  these  cases  to  appre- 
ciate that  the  original '  Baker '  cannot  exist  alongside  eleven  other 
Bakers  and  keep  his  business  free  from  unfair  trade,  merely  be- 
cause the  eleven  other  Bakers  use  explanations  on  their  goods. 
Where  an  old  established  business  has  been  long  known  by  a 
personal  name,  in  the  market  two  products  of  that  name  cannot 
exist  without  confusion  and  fraud  and  serious  injury  to  the  orig- 
inal concern.  This  may  create  a  difficult  legal  question  but  it  is  a 
commercial  fact  which  the  courts  must  soon  recognize  and  with 
which  they  must  adequately  deal." 

*6°235  U.  S.  88,  35  Sup.  Ct.  91-  '-'Baker  v.  Slack,  130  Fed.  514- 
1914.  1904. 


Acquired  Meaning  of  Personal  Names  137 

It  is  difficult  to  realize  how  it  accords  with  public  policy  to 
penalize  the  defendant  who  misuses  his  rights  in  his  name  by 
using  it  as  part  of  a  corporate  name  and  yet  fails  to  accord  with 
public  policy  to  impo  ;e  a  similar  penalty  when  he  commits  the 
same  fraud  by  use  of  the  name  by  itself  or  as  a  partnership  name. 

It  is  difficult,  further,  to  see  how  public  interest  can  be  imperilled 
by  a  rule  compelling  the  defendant  guilty  of  unfair  competition 
in  the  use  of  his  name,  as  a  penalty  therefor  to  be  deprived  of  his 
right  to  use  it,  not  entirely,  but  merely  in  the  one  field  of  business 
in  which  he  has  used  it  as  a  means  of  fraud. 

Stevenson,  V.  C,  says  in  L.  Martin  Co.  v.  L.  Martin  &  Wilckes 
Co.,  2^"  ''Howe  Scale  Co.  v.  Wyckoff,  Seamans  &  Benedict,^''''  so 
far  as  it  negatives  when  properly  interpreted  the  proposition  that 
the  use  of  a  family  name  by  a  corporation  stands  on  a  different 
footing  from  its  use  by  individuals  or  firms,  is,  I  think,  inconsistent 
with  the  unanimous  opinion  of  the  Court  of  Errors  and  Appeals 
in  this  State  in  International  Silver  Co.  v.  Rogers  Corporation.'^'''' 

"I  think  we  have  got  beyond  the  notion,  if  it  ever  prevailed, 
that  a  man  has  an  absolute  right  to  use  his  name  in  his  business 
shutting  his  eyes  to  the  inevitable  effect  of  such  use  to  deceive 
the  public  generally,  and  to  injure  some  other  dealer  in  the  mar- 
ket. The  maxim  sic  utere  tuo  ut  alienum  non  Icedas  applies  to 
everything  that  a  man  has,  including  his  name." 

§  72.  Acquired  Generic  or  Secondary  Meaning  of  Personal 
Names.  —  In  the  difficulty,  which  the  courts  have  found,  in  pre- 
serving this  right  which  every  man  has,  to  use  his  own  name,  and 
at  the  same  time  preventing  injury  and  fraud  arising  from  the 
exercise  of  that  right,  the  doctrine  of  secondary  meaning  has  been 
invoked.  Words  which  form  a  part  of  the  common  stock  of  the 
language  may  become  so  thoroughly  identified  with  some  one 
person's  business  or  goods,  that  it  is  quite  possible  that  the  use  of 
them  alone,  without  any  qualifying  words  or  other  explanation, 
by  another  manufacturer,  will  deceive  buyers  into  believing 
that  there  is  but  one  concern  or  one  brand  of  goods  instead  of 
two.  This  same  rule  has  been  apphed  in  personal  name  cases. 
There  are  many  cases  on  record  where  a  family  name  has  become 
so  completely  identified  with  a  particular  business  or  manufac- 
turing plant  as  to  become  synonymous  with  it.^^ 

2'"  75  N.  J.  Eq.  39-50.  =^  G7  N.  J.  Eq.  646. 

"''  198  U.  S.  119.  28  For  discussion  of  rule  as  to  Sec- 


138       Family  Names  or  Surnames,  as  Trade  Names 

Where  a  personal  surname  does  become  so  identified  with  an 
article  of  trade  or  business  as  to  become  synonymous  with  it,  it 
follows  that  for  a  rival  to  use  this  same  name  —  even  though  it  is 
his  surname  and  his  fathers  have  borne  it  before  him  —  cannot 
but  create  confusion. 

' '  Where  other  persons  bearing  the  same  surname  have  previously 
used  the  name  in  connection  with  their  goods,  in  such  manner  and 
for  such  length  of  time  as  to  make  it  a  guaranty  that  the  goods 
bearing  the  name  emanate  from  them,  they  will  be  protected 
against  the  use  of  that  name,  even  by  a  person  bearing  the  same 
name,  in  such  fomi  as  to  constitute  a  false  representation  of  the 
origin  of  the  goods."  ^^  It  is  quite  possible  that  a  trade  may  be  so 
constituted  that  some  one  of  its  products  will  become  eventually 
completely  identified  with  one  house  or  one  person  or  one  place. 
This  person  may  have  founded  the  business  and  developed  the 
product,  yet,  in  opposition  to  the  rights  arising  out  of  such  a 
condition,  stands  the  other  right  of  every  other  person  bearing 
that  same  name  to  use  it  as  he  will.  The  English  Court  of  Ap- 
peals said  in  1902,  that  "there  never  has  been  a  case  in  which  an 
order  has  been  made  restraining  a  man  altogether  from  carrying 
on  in  his  own  name  a  particular  trade.  Every  decision  that  has  as 
yet  been  given  has  been  limited  to  restraining  him  from  carrying 
on  such  trade,  so  identified  with  the  plaintiff's  business,  with- 
out taking  the  steps,  which  any  honest  man  ought  to  wish  to 
take,  to  prevent  his  goods  being  confounded  with  the  plaintiff's 
goods,  whose  goods  are  so  much  identified  with  the  particular 
trade."  =^° 

This  statement  of  the  English  court  is  probably  true.  There 
are  few  cases  of  authority  which  absolutely  prohibit  a  man 
from  using  his  own  name,  although  a  person  has  been  definitely 
prohibited  from  using  an  adopted  name,  ^'  but  there  is  good  rea- 
son to  believe  that  it  will  not  be  long  before  the  justice  of  a  more 
effective  remedy  will  be  realized. 

The  rules,  as  to  secondary  meaning  of  personal  names  do  not 

ondary  ^Meaning  of  Names  of  Business  ^^  Cash  v.  Cash,  19  R.  P.  C.  181- 

Houses  see  chapters  on  "  Secondary  1902;  86  L.  T.  211. 

Meaning  "  and  "  Corporate  Names."  "  Pinet   et   Cie   v.   Madison  Louis 

29  Lnndreth    v.    Landreth,    22    Fed.  Pinet,  Ltd.,  15  R.  P.  C.  65-1897.    See 

41-1884    (C.    C.    Wis.);    followed   in  contra  L.  E.  Waterman  Co.  y.  Modern 

Garrett  v.  T.  H.  Garrett  &  Co.,  78  Fed.  Pen  Co.,  235  U.  S.  88;  35  Sup.  91. 
472-1896;  24  C.  C.  A.  173. 


Acquired  Meaning  of  Personal  Names  139 

differ  from  those  applicable  to  other  classes  of  names  when  used 
in  a  secondary  sense.  These  rules  are  discussed  in  the  chapter  on 
* '  Secondary  Meaning. ' '  Practically  all  cases  of  unfair  competition 
in  the  use  of  personal  names  involve  secondary  meaning  because, 
prima  facie,  every  person  has  a  right  to  use  his  own  name.  When 
the  name  is  used  in  such  a  sense  as  to  convey  some  meaning  other 
than  its  personal  or  family  meaning  a  secondary  meaning  is 
created. 

Cases  sometimes  occur  where  a  family  name  has  been  so  long 
used  and  so  generally  used  that  the  public  have  adopted  the  name 
as  the  common  name  of  an  article  or  business  and  it  is  in  constant 
daily  use  in  that  sense.  When  such  a  situation  is  found,  it  is  some- 
times a  commercial  impossibility  for  another  person  to  use  the 
same  name  in  the  same  business  and  not  cause  confusion.  Such  a 
situation  arose  in  the  Stone  Ale  case  ^-  in  England,  as  regards  the 
geographic  name  ''Stone"  as  applied  to  ale,  and  the  House  of 
Lords  pointed  out  the  fact  that  it  was  not  possible  for  the  defend-  »/ 
ant  to  use  the  name  Stone  in  the  ale  business  and  not  cause  con- 
fusion and  forbade  the  defendant  to  use  it  at  all.  There  is  little,  if 
any  difference  between  a  person's  rights  in  his  own  name  and  in 
the  name  of  the  community  in  which  he  is  located.  There  are 
various  American  cases  which  have  applied  the  same  rule. 

In  1907,  the  United  States  Circuit  Court,  in  J.  F.  Rowley  Co. 
v.  Rowley,^^  prohibited  E.  H.  Rowley  from  using  name  Rowley 
in  any  way  in  the  sale  of  artificial  limbs,  saying:  *'As  an  abstract 
right,  every  person  has  the  right  to  the  use  of  his  own  name;  but 
when  the  use  of  such  name  is  but  a  cloak  to  cover  an  intended 
fraud  upon  the  rights  of  another,  the  wrongdoer  has  himself  and 

^^  Montgomery  v.  Thompson,  (1891)  ent's  agency  was  shortly  terminated, 

A.  C.  217,  64  L.  T.  R.  748.  whereupon  he  set  up  in  same  business 

'3  J.  F.  Rowley  Co.  v.  Rowley,  154  for  himself.     His  business  sign,  under 

Fed.  744-1907  (C  C.  Pa.),  reversed  his  own  name,  contained  in  large  let- 

161  Fed.  94.     Complainant,  the  J.  F.  ters,    the    words    "Rowley    Artificial 

Rowley  Co.,  had  for  many  years  in  Limbs."     He  not  only  described  his 

Chicago  made  artificial  legs  which  had  goods  as  "  Rowley  Limbs,"  but  made 

a  high  reputation  and  were  known  as  false    or    misleading    representations, 

"Rowley"  legs.     Respondent,  E.  H.  and  used  fraudulent  devices  to  divert 

Rowley,  a  brother  of  the  president  of  trade  to  himself.     Held,  that  he  should 

complainant,  had  been  employed  by  it  be    enjoined    from    using    the    word 

for  some  time  at  Chicago,  and  was  sent  "Rowley"  in  any  way  in  the  sale  of 

as  its  agent  to  Pittsburg.     Respond-  artificial  limbs. 


140       Family  Names  or  Surnames,  as  Trade  Names 

not  the  law  to  blame  for  placing  a  limitation  upon  the  right  to  the 
use  thereof"  (citing  cases). 

"In  view  of  the  facts  of  this  case,  and  particularly  of  the  con- 
duct of  this  respondent,  we  are  very  clear  that  nothing  short  of  a 
total  prohibition  of  tlie  name  Rowley  in  connection  with  the 
manufacture  and  sale  of  artificial  limbs  will  grant  to  the  com-, 
plainant  that  complete  protection  and  preservation  of  its  property 
in  its  trade-name  and  good  will  to  which  it  is  entitled  under  the 
law"  (id.  p.  747). 

This  decision  was  reversed  on  appeal  and  it  was  held  that 
the  defendant  could  not  be  enjoined,  entirely,  from  using  his 
own  name,  but  he  was  directed  to  accompany  his  use  of  the  name 
by  proper  explanations.^* 

A  person  has  been  forbidden  to  use  his  surname  in  a  particu- 
lar business,  where  he  has  sold  that  right  to  the  plaintiff  and  his 
use  of  it  in  that  business  after  the  sale  was  causing  confusion. 
This  was  done  in  the  case  of  Ball  v.  Best.^'^  Ball  owned  Best  & 
Co.,  of  New  York,  ''Liliputian  Bazaar, '^  a  house  selling  children's 
clothing.  Defendant  having  formerly  been  with  Best  &  Co.,  of 
New  York,  as  had  his  brother,  left  the  concern  and  bought  S.  & 
Co.,  of  Chicago,  and  took  the  name  of  A.  S.  Best  &  Co.,  associat- 
ing his  brother  with  him,  nominally.  On  his  sign,  he  put  "Lili- 
putian  Outfitters"  and  "Formerly  with  Best  &  Co.,  New  York." 
"Formerly  it  would  have  been  assumed,  in  the  absence  of  most 
positive  proof,  that  a  party  might  carry  on  his  own  business  under 
his  own  name  in  Chicago,  notwithstanding  the  fact  that  parties 
had  established  business  under  the  same  name  in  New  York,  since 
there  could  be  no  presumption  that  the  business  interests  of  the 
two  cities  could  be  so  intimate  as  to  extend  the  good-will  of  such  a 
business  as  that  before  the  court  all  the  way  from  New  York  to 
Chicago.  It  is  not  a  light  thing  to  restrain  a  man  from  the  full 
benefit  of  his  name,  nor  would  a  court  of  equity  consider  such 
a  course  in  any  case  even  now,  in  the  absence  of  fraud  or  actual 
damage.  It  is  apparent  in  this  case  that  defendant  shaped  his 
business  and  presented  the  same  to  the  public  with  the  intention 
of  gettmg  the  benefit  of  complainant's  standing  and  business 
prestige.  The  only  basis  upon  which  a  contrary  conclusion  could 
be  arrived  at  would  be  positive  evidence  to  the  effect  that  the 
two  fields  of  patronage  did  not  conflict.    But  it  is  in  evidence  that 

»  161  Fed.  94.  "  135  Fed.  434-1905  (C.  C.  III.). 


Acquired  Meaning  of  Personal  Names  111 

complainant  is  a  manufacturer  and  dealer,  and  that  he  does  a 
large  mail  order  business,  as  does  also  defendant.  It  hardly  needs 
saying  that  the  proficiency  of  the  mails  at  this  date  is  such  that 
every  nook  and  corner  of  the  nation,  as  well  as  of  Manitoba,  is  as 
accessible  as  were  places  fifty  miles  away  from  New  York  a  few 
years  ago.  It  cannot  be  otherwise  than  that  the  advertising  and 
canvassing  of  these  two  rival  concerns  pass  and  repass  each  other 
innumerable  tunes  in  their  journeys  to  the  centers  of  trade  as  well 
as  to  the  homes  of  the  people  —  mute  contestants  for  the  favor  of 
supplying  the  wants  of  each  customer.  I  am  clear  that  under  the 
facts  in  this  case  the  court  must  hold  that  the  use  of  the  name  of 
Best  &  Co.,  by  defendant,  even  with  its  present  prefix,  espe- 
cially in  connection  with  the  word  'Liliputian,'  is  a  fraud  upon 
complainant's  business  rights.  The  action  of  defendant  was 
deliberate.  He  both  intended  to  and  did  trespass  upon  com- 
plainant's rights,  and  take  advantage  of  his  good-will  and  trade. 
It  is  not  miportant  what  definition  is  placed  upon  '  Liliputian.' 
The  name  of  Best  &  Co.,  with  the  use  of  that  word,  constituted 
complainant's  good-will.  That  use  was  arbitrary,  and  stands  for 
complainant's  goods.  The  complainant  is  clearly  entitled  to  the 
reHef  prayed  for  as  to  the  use  of  the  name  'Best  &  Co.,'  with  and 
without  prefixes"  (id.  p.  436). 

The  Cash  case  ^^  is  a  typical  case  of  this  character.  The  plain- 
tiff and  defendant  bore  the  name  ''Cash."  They  were  in  business 
in  the  same  town;  they  manufactured  the  same  articles,  viz., 
woven  names  and  frillings.  The  problem  in  the  case  was,  whether 
it  was  possible  for  Joseph  Cash,  the  defendant,  to  have  a  shop 
in  Coventry  and  there  sell  these  articles  and  not  have  them 
known  (as  the  plaintiff's  goods  had  been  known  for  some  years) 
as  "Cash's  frillings,"  and  "Cash's  woven  names,"  and  cause 
unfair  loss  of  trade  to  the  plaintiff.  The  lower  court  forbade 
the  defendant  to  sell  these  goods  under  the  name  of  Cash,  but 
the  Court  of  Appeal  modified  this  decision  and  its  injunction 
was  as  follows:  "This  court  doth  order  that  the  defendant, 
Joseph  Cash,  be  restrained  from  selling  any  frilHngs  or  woven 
names  or  initials,  not  manufactured  by  the  plaintiffs,  as  'Cash's 
Frillings'  or  'Cash's  Woven  Names  or  Initials'  and  from  carry- 
ing on  the  business  of  a  manufacturer  or  seller  of  frillings,  or 
woven  names  or  initials,  under  the  name  of  'Joseph  Cash  & 
'^Cash  V.  Cash,  19  R.  P.  C.  181-1902. 


142       Family  Names  or  Surnames,  as  Trade  Names 

Co.,'  while  not  in  partnership  with  any  other  person,  or  from 
carrying  on  any  such  business  either  in  the  name  of  'Cash,'  or 
under  any  style  in  which  the  name  'Cash'  appears,  without  taking 
reasonable  precautions  to  clearly  distinguish  the  business  carried 
on,  and  the  frillings  and  woven  names  and  initials  manufactured 
or  sold  by  the  defendant  from  the  business  carried  on,  and  the 
frillings  and  woven  names  manufactured  by  the  plaintiff,  and  from 
carrying  on  any  such  business  under  any  name  or  in  any  manner 
so  as  to  mislead  or  deceive  the  public  into  the  belief  that  the  busi- 
ness of  the  defendant,  or  the  frillings  or  woven  names  or  initials 
manufactured  or  sold  by  him  are  the  business  of,  or  the  goods 
manufactured  by  plaintiff,  or  that  the  defendant  is  carrying  on 
the  business  formerly  carried  on  at  Coventry  by  Messrs.  J.  &  J. 
Cash,  the  vendors,  predecessors  in  business  of  the  plaintiffs." 

The  defendant  was  prohibited  also  from  making  over  his  busi- 
ness to  a  corporation  with  a  name  likely  to  mislead,  or  from 
soliciting  any  of  Cash's  former  customers  in  any  way. 

Lindley,  L.  J.,  in  Jamieson  v.  Jamieson,^''  states  that:  "The 
court  ought  not  to  restrain  a  man  from  carrying  on  business  in 
his  own  name  simply  because  there  are  other  people  who  are 
doing  the  same  and  who  will  })c  injured  by  what  he  is  doing.  It 
would  be  intolerable  if  the  court  were  to  interfere,  and  to  prevent 
people  from  carrying  on  business  in  their  own  name  in  rivalry  to 
others  of  the  same  name.  There  must  be  something  far  more 
than  that,  viz.,  that  the  person  who  is  carrying  on  the  business  in 
his  own  name  is  doing  it  in  such  a  way  as  to  pass  off  his  goods  as 
the  goods  of  somebody  else.  We  must  not  lose  sight  for  a  moment 
of  the  real  question  which  we  have  to  try — the  question  of  fact" 
(id.  p.  181),  whether  he  is  passing  off,  or  conducting  his  trade  in 
such  a  way  as  to  pass  off  his  goods  as  the  goods  of  somebody 
else. 

The  same  judge  said  substantially  the  same  thing,  though  in 
different  language,  with  reference  to  different  circumstances  in 
Powell  V.  Birmingham  Vinegar  Brewery  Company J^  "Again,  if  a 
person  uses  words  which  simply  describe  the  kind  of  goods  he 
makes  or  sells — e.  g.,  leather  goods — it  would  be  intolerable  to 
confer  upon  him  the  right  to  prevent  other  persons  from  honestly 
using  the  same  words  to  describe  what  they  make  or  sell.     Al- 

"  15  R.  P.  C.  1G9-81-1S97.  '^  (1806)  2  Ch.  54-69;  s.  c.  on  ap- 

peal (1897)  L.  R.  App.  Cas.  710. 


Family  Names  as  General  Names  of  Articles      143 

though,  however,  a  person  by  using  his  own  name,  or  a  merely 
descriptive  word,  to  denote  a  particular  article,  cannot  prevent 
other  bona  fide  traders  of  the  same  name  from  using  it,  or  prevent 
other  bona  fide  traders  making  or  selling  the  same  sort  of  goods, 
from  using  the  same  descriptive  words,  yet,  even  in  such  a  case,  if 
the  descriptive  name  is  proved  to  mean  the  goods  of  the  plaintiff, 
and  if  deception  is  also  proved,  a  person  may  be  restrained  from 
using  such  name  or  word  without  taking  such  steps  as  will  render 
mistakes  unhkely  to  occur."  ^^ 

In  deciding  cases  where  a  complete  and  definite  secondary 
meaning  is  established,  as  in  the  Stone  Ale  case  (supra)  the  court 
must  decide  between  depriving  the  defendant  of  his  use  of  his  own 
name,  not  totally,  but  merely  in  reference  to  the  particular 
article  or  articles,  with  which  the  name  has  become  associated  by 
the  public  in  connection  with  his  rival's  business  and  permitting 
a  condition  to  continue  in  which  fraud  is  inevitable.  The  state- 
ment is  often  made  in  these  cases  to  the  effect  that  "a  man  may 
use  his  own  name  because  he  cannot  truthfully  do  business  under 
any  other."  ^^  This  would  not  seem  strictly  according  to  fact. 
When  the  alternative  is  presented  of  using  one's  personal  name 
and  thus  causing  widespread  confusion  and  deceit  of  the  public  or 
adopting  an  assumed  name  under  which  to  conduct  business  or  sell 
merchandise,  the  later  comer  should  be  compelled  to  use  the 
latter  method. 

§  73.  Family  Names  as  Generic  or  General  Names  of  Articles. 
—  Sometimes,  family  names  acquire  not  only  a  secondary  mean- 
ing, but  become  the  primary  name  of  an  article  which  anyone  may 
use.  But  even  then,  no  one  may  pass  his  goods  off  as  those  of  the 
original  maker  of  the  article  by  the  use  of  the  name.  "Where  the 
name  is  one  which  has  previously  thereto  come  to  indicate  the 
source  of  manufacture  of  particular  devices,  the  use  of  such  name 
by  another,  unaccompanied  with  any  precaution  or  indication,  in 
itself  amounts  to  an  artifice  calculated  to  produce  the  deception 

'"  Fine  Cotton  Spinners  and  Dovblers  by  plaintiffs,  formed  the  defendant 
Assn.,  Ltd.,  V.  Harwood,  Cash  &  Co.,  company  in  order  to  carry  on  a  corn- 
Lid.,  2  Ch.  184-1907.  Plaintiffs  made  peting  business.  Held,  that  the  use  of 
yarns,  long  associated  by  the  public  the  name  "Cash"  as  part  of  the  de- 
with  the  word  "Cash,"  originally  a  fendant's  corporate  title  would  be  en- 
family  name,  the  goods  being  gener-  joined. 

ally  described  as  "Cash"  goods.    John  *°  DeLong  v.  DeLong,  89  Hun  (N. 

Harwood    Cash,    formerly    employed  Y.),  399-403. 


144       Family  Names  or  Surnames,  as  Trade  Names 


)C 


alluded  to  in  the  foregoing  adjudication."  ^^  Names  so  used  may 
not  be  appropriated  by  any  one  person  any  more  than  one  is 
allowed  to  appropriate  to  himself  the  name  ''Wine  Company,"  or 
''Cotton  Company."  They  become  necessary  to  all  as  the  only 
words  to  name  an  article  of  general  use;  they  are  general  terms. 
Such  a  name  is  "Goodyear  Rubber,"  viz.,  rubber  manufactured 
or  treated  by  Goodyear's  particular  process;  or  "Singer  Sewing 
Machines"  machines  of  a  particular  type,  "Liebig's"  Meat 
Extract,  or  "  Hostetter's  "  Bitters.''^ 


*^  Singer  Mfg.  Co.  v.  June  Mfg. 
Co.,  163  U.  S.  169-1895;  41  L.  ed.  118; 
16  Sup.  Ct.  1002,  quoted  in  Interna- 
tional Silver  Co.  v.  Rogers,  67  Atl.  105- 
1907. 

"  Goodyear  India  Rubber  Glove  Mfg. 
Co.  V.  Goodyear  Rubber  Co.,  128  U.  S. 
598-1888;  32  L.  ed.  538;  9  Sup.  Ct. 
166.  Plaintiff  was  organized  in  New 
York,  Nov.,  1872;  prior  to  that  time 
defendant  existed  under  laws  of 
Connecticut.  For  many  j^ears,  de- 
fendant had  used  and  was  known  to 
trade  as  "Goodyear's  Rubber  Manu- 
facturing Co."  or  "Goodyear  Rubber 
Co."  or  "The  Goodyear's  Company." 
Held,  "The  name  'Goodyear  Rubber 
Company'  is  not  one  capable  of  exclu- 
sive appropriation.  'Goodyear  Rub- 
ber' are  terms  descriptive  of  well- 
known  classes  of  goods  produced  by 
the  process  known  as  Goodyear's  in- 
vention. Names,  which  are  thus 
descriptive  of  class  and  of  goods  can- 
not be  exclusively  appropriated  by 
anyone.  The  addition  of  the  word 
'  Company '  only  indicates  that  parties 
have  formed  an  association  or  partner- 
ship to  deal  in  such  goods.  Thus 
parties  *  *  *  might  style  them- 
selves Wine  Company,  Cotton  Com- 
pany or  Grain  Company.  All  persons 
have  a  right  to  deal  in  such  articles  and 
to   publish   the   fact  to   the   world." 

Liebig's  Extract  of  Meat  Co.,  Ltd., 
V.  Walker,  115  Fed.  822-1902.     Com- 


plainant made  and  sold  extract  of 
meat,  put  up  in  two-ounce  jars,  with  a 
wrapper  and  neck  label,  and  capped 
with  a  metallic  capsule.  The  label 
bore  the  words  "Liebig's  Extract  of 
Meat,"  the  name  of  complainant  as 
maker,  and  the  facsimile  signature 
"J.  v.  Liebig"  in  blue  script,  running 
diagonally  across  the  printed  matter. 
Defendant  offered  an  extract  of  meat 
put  up  in  jars  of  the  same  shape  and 
size,  with  neck  label  and  wrapper  of 
substantially  the  same  appearance, 
printed  in  the  same  colors  and  bearing 
the  words  "Liebig's  Extract  of  Beef" 
and  the  names  "Liebig  Fluid  Beef 
Co."  and  "Liebig  Beef  Co.,"  both  of 
which  were  fictitious.  Diagonally 
across  the  wrapper  was  the  facsimile 
signature  "J.  T.  Walker"  in  blue 
script,  resembling  in  appearance  the 
signature  on  complainant's  wrappers, 
and  other  portions  of  the  reading  mat- 
ter were  similar.  Held,  that  while 
defendant  was  at  hberty  to  use  the 
word  "Liebig,"  prefixed  to  the  words 
"Extract  of  Meat,"  as  "Liebig"  had 
become  a  generic  designation  of  the 
article,  yet  defendant  was  guilty  of 
unfair  competition  in  the  dress  of  his 
goods,  and  in  using  the  name  "Lie- 
big's Fluid  Beef  Co." 

Liebig's  Extract  of  Meat  Co.,  Ltd.,  v. 
Libby,  McNeill  &  Libby,  103  Fed.  87- 
1900  (C.  C.  N.  D.  111.).  Complainant 
had  for  many  years  sold  this  product 


Family  Names  as  General  Names  of  Articles      145 


"While  all  intendments  are  made  in  favor  of  a  person  fomierly 
in  the  trade  when  he  sets  up  a  new  firm,  the  presumptions  are 
against  a  stranger  to  a  business  when  he  sets  up  a  rival  establish- 
ment." ^^  There  is  also  a  presumption  that  the  use  of  one's  own 
name  is  an  honest  one;  but  it  may  be  rebutted  by  showing  a  prior 
fraudulent  use  of  the  name/*  And  where  there  has  been  such 
prior  use,  the  burden  is  on  the  defendant  to  show  that  the  use  of 
his  name  which  is  questioned  is  not,  in  effect,  a  continuation  of 
such  prior  use.  The  Illinois  court  has  enjoined  a  nephew  from 
using  the  family  name  which  both  he  and  his  uncle  bore,  in  the 
same  business  as  that  of  his  uncle,  where  the  nephew  opened  a 
store  near  the  uncle's  with  similar  show  windows,  and  goods 
packed  in  smiilar  boxes  and  bearing  similar  labels.*^ 


extensively  in  the  United  States,  when 
defendant  entered  the  market  with  a 
similar  extract  distinctively  dressed, 
but  subsequently  sent  out  its  goods  in 
a  package  very  similar  to  complain- 
ants' in  color  and  general  appearance, 
and  used  on  the  package,  as  the  name 
of  the  maker,  the  fictitious  title  of 
"Liebig  Fluid  Beef  Co."  Held,  un- 
fair competition.  In  Liebig's  Extract 
of  Meat  Co.  v.  Liebig's  Extract  Co.,  180 
Fed  688,  C.  C.  A.,  it  was  held  that 
an  exclusive  right  to  the  name  "  Lie- 
big  "  was  shown  based  on  a  grant 
from  the  original  Liebig  and  an  ex- 
clusive user  of  over  twenty  years. 

Hostetter  v.  Fries,  17  Fed.  620-1883 
(C.  C.  S.  D.  N.  Y.).  Complainants 
manufactured  "Dr.  J.  Hostetter 's 
Stomach  Bitters"  but  tlie  process  was 
not  patented.  Held,  that  since  it  was 
open  to  anyone  to  manufacture  such 
bitters,  and  since  the  only  name  by 
which  the  article  was  known  was 
"Hostetter's  Bitters,"  defendants  were 
entitled  to  make  and  sell  similar 
bitters  (or  an  essence  from  which  they 
might  be  prepared)  and  to  call  them 
"Hostetter's  Bitters"  so  long  as  there 
was  no  simulation  in  bottles,  labels  or 
devices;  also  that  defendants  were  not 


hable  for  the  unlawful  acts  of  retailers 
merely  because  they  supplied  them 
with  some  of  the  means  employed  by 
them  (the  retailers). 

"  TTm.  Rogers  Mfg.  Co.  v.  Rogers 
Mfg.  Co.,  16  Phila.  178-80-1883. 

^*  International  Silver  Co.  v.  Rogers, 
67  Atl.  105-1907. 

"  Rubel  V.  Allegretti  Chocolate  Cream 
Co.,  76  111.  App.  581-1898.  Com- 
plainant, the  Allegretti  Chocolate 
Cream  Co.,  was  the  successor  of  Ig- 
nazio  Allegretti,  who  had  long  made 
and  sold  confections  widely  and 
favorably  known  as  "Allegretti" 
Chocolate  Creams.  He  and  his  two 
sons  were  the  only  persons  interested 
in  the  complainant  corporation.  De- 
fendant, Giacomo  Allegretti  was  a 
nephew  of  Ignazio  and  had  for  sev- 
eral years  been  in  his  or  complainants' 
employ,  and  formed  a  partnership  for 
the  making  of  chocolate  creams  with 
B.  F.  Rubel  and  I.  A.  Rubel,  hardware 
merchants,  under  the  firm  name 
"Allegretti  &  Co."  The  firm  then 
opened  a  store  not  far  from  com- 
plaints', with  very  similarly  arrayed 
show-windows,  and  the  goods  re- 
sembled complainants'  in  appearance, 
and  were  put  in  similar  boxes  with 


146       Family  Names  or  Surnames,  as  Trade  Names 


Again  where  Hires  had  built  up  a  prosperous  business,  the 
court  enjoined  another  person  of  same  name  from  entering  the 
same  business  under  the  name  of  Hires.'*'^  See  chapter  on  "Cor- 
porate Names." 

§  74.  Surnames  Used  as  Abbreviations.  —  A  family  name  is 
often  used  in  an  abbreviated  form,  —  "Wanamaker's,"  "Hires','' 
similar  labels.    Held,  that  defendants      evidence"   (p.  569).     Citing  Russian 


.  were  properly  enjoined  from  using  the 
■\  name  "AUegretti"  or  "Allegretti  & 
Cq." 

*^  Charles  E.  Hires  Co.  v.  George 
A.  Hires,  182  Pa.  St.  346-1897;  37 
Atl.  1117,  Plaintiff  put  on  the  market 
Hires  Root  Beer  and  it  became  well 
known;  defendant  later  entered  same 
business  under  his  own  name.  "But 
for  the  fortuitous  identity  of  family 
name  it  is  clear  that  the  respondents 
would  not  have  embarked  in  this  pro- 
posed commercial  venture  and  the 
evidence  shows  their  studied  purpose 
was  to  keep  as  close  to  the  appearances 
and  name  of  the  plaintiff's  article  as 
possible  and  preserve  similarity  while 
yet  presenting  minor  differences" 
(p.  347).     Injunction  awarded. 

Van  Stan's  Stratena  Co.,  Ltd.,  v.  Van 
Stan,  209  Pa.  St.  564-1904;  58  Atl. 
1064.  Defendant's  father  assigned  to 
plaintiff's  assignor  right  to  make  a  ware 
which  he  had  invented  and  to  use  his 
name.  Defendant,  who  was  a  son  of 
the  inventor,  after  being  in  employ  of 
plaintiff,  withdrew  and  sold  the  ware 
under  his  own  name,  simulating 
plaintiff's  label,  etc.  Held,  defendant 
had  not  the  right  to  use  his  own  name 
as  a  trade-mark  of  the  goods  sold  by 
him.  "But  assuming  he  had  a  tech- 
nical right  to  use  his  own  name, 
he  clearly  had  no  right  to  use  it  to 
deceive  the  public,  for  such  a  use 
would  be  a  fraud  upon  the  clear  right 
of  the  purchasers  of  the  trade-mark. 
That  he  intended  to  and  did  de- 
ceive   *    *    *    is  manifest  from  the 


Cement  Co.  v.  LePage,  147  Mass.  206- 
1888;  17  N.  E.  304;  Fish  Bros.  Wagon 
Co.  V.  La  Belle  Wagon  Works,  82  Wis. 
546-1892;  52  N.  W.  595;  16  L.  R.  A. 
453;  Stonebraher  v.  Stonebraker,  33 
Md.  252-1870;  Holmes  et  al.  v.  Holmes 
Mfg.  Co.,  37  Conn.  278-1870. 

Pillsbury  v.  Pillsbury-Washburn 
Flour  Mills  Co.,  64  Fed.  841-1894  (C. 
C.  A.  7th  Cir.).  Complainant-appellee 
was  the  successor  in  business  of  Chas. 
A.  Pillsbury  &  Co.  and  had  long  been 
known  as  a  manufacturer  of  flour, 
which  was  of  a  superior  grade,  and 
was  made  by  a  patent  process.  They 
had  long  applied  to  their  packages  a 
brand,  the  principal  part  of  which  was 
inclosed  in  a  circle,  and  read;  "Pills- 
bury's  Best  X  X  X  X  Minneapolis, 
Minn."  Defendant  appellant,  L.  F. 
Pillsbury,  was  a  dealer  in  flour  in  a 
small  town  in  Illinois;  in  1893,  he  began 
to  put  up  and  sell  flour,  which  he 
bought  of  various  millers,  in  packages 
bearing  a  brand  closely  resembhng 
complainant's  in  appearance  and  in 
the  colors  of  the  letters,  the  principal 
part  of  which,  inclosed  in  a  circle,  read: 
L.  F.  PiUsbury's  XXXXXXX,  Best 
Patent,  Minnesota."  Held,  that  this 
mark  was  a  colorable  imitation  of 
complainants',  intended  to  mislead 
the  public  as  to  the  origin  of  the  goods, 
and  that  it  did  not  avail  defendant 
that  he  was  accustomed  to  explain  to 
dealers  that  he  was  not  selling  com- 
plainant's flour,  but  other  flour  of 
equal  or  superior  grade. 


Surnames  Used  as  Abbreviations 


147 


"Hiiyler's,"  ''Cameron's."  When  any  particular  concern  has 
reached  such  a  place  in  the  regard  of  the  public  as  to  be  known 
generally  in  that  familiar  way,  that  concern  has  a  right  to  protec- 
tion against  a  rival  which  advertises  itself  simply  by  use  of  the 
family  name.'*^  The  use  of  the  same  proper  name  in  conjunction 
■"'  Church  V.  Kresner,  26  App.  Div.     own  immediate  locality?     There  can 


/ 


(N.  Y.)  349-1898;  49  N.  Y.  Supp. 
742.  In  1892,  plaintiff  entered  the 
retail  clothing  business,  in  Brooklyn, 
as  "Cameron's."  At  that  time,  there 
was  no  other  establishment  in  Brook- 
lyn using  that  name  nor  had  one  of 
that  name  been  known  there  before. 
In  1894,  defendant  opened  a  store 
near  the  plaintiff's  and  began,  through 
)iis  agents  and  employees,  to  create 
^the  impression  that  his  store  was 
"Cameron's,"  by  use  of  various  de- 
vices all  of  which  injured  the  plaintiff. 
In  1895,  defendant  openly  proclaimed 
by  signs  and  other  devices  his  place  as 
"Cameron's."  Plaintiff  alleged  that 
such  adoption  of  the  name  "Camer- 
on's" as  business  name  or  trade  sign 
and  defendant's  conduct  of  the  busi- 
ness was  for  the  purpose  of  deceiving 
the  public  into  believing  that  defend- 
ant's place  of  business  was  in  reality 
that  of  the  plaintiffs.  On  the  author- 
ity of  Higgins  Co.  v.  Higgins  Soap  Co., 
144  N.  Y.  462-1895;  Lee  v.  Haley,  L. 
R.  5  Ch.  App.  155-1869;  Devlin  v. 
Devlin,  69  N.  Y.  212-1877;  Caswell  v. 
Hazard,  121  N.  Y.  484-1890;  24  N.  E. 
707,  the  court  held  (p.  353):  "If  the 
defendant  had  been  desirous  of  build- 
ing up  a  reputation  for  himself,  if  he 
had  not  found  the  name  of  'Camer- 
on's' to  have  a  value  to  which  he 
had  contributed  no  part,  and  to  which 
he  had  no  right  of  enjoyment,  can  we 
conceive  of  a  reason  why  he  should, 
after  a  business  experience  of  some 
months,  take  to  himself  a  name  which 
had  already  been  adopted  by  another 
in  the  same  line  of  business  and  in  his 


be  but  one  answer  to  this  question." 
E.  H.  Taylor,  Jr.,  &  Sons  Co.  v. 
Taylor,  27  Ky.  L.  Rep.  625;  85  S.  W. 
1085-1905.  Plaintiff  and  its  predeces- 
sors had  long  distilled  and  sold  a  pure 
whiskey  which  had  become  well  known 
as  "Old  Taylor"  whiskey.  Defendant 
was  not  a  distiller,  but  a  rectifier,  and 
began  putting  upon  the  market  a 
blended  whiskey  at  a  lower  price  as 
"Fine  Old  Kentucky  Taylor"  whis- 
key, advertising  it  as  pure  whiskey, 
and  describing  the  sellers  as  distillers. 
His  bottles  did  not  resemble  plaintiff's 
nor  could  his  labels  be  said  to  resemble 
plaintiff's,  except  in  the  use  of  the 
words  above  mentioned.  Held,  that, 
while  there  was  no  infringement  of  ^^ 
trade-mark,  there  was  fraudulent  ^ 
simulation  tending  to  mislead  those 
not  familiar  with  the  whiskey  trade. 
Mortonv.  Morton,  148  Cal.  142-1905; 
82  Pac.  664;  1  L.  R.  A.  N.  S.  660n. 
Plaintiffs,  Wm.  R.  Morton  and  others, 
were  expressmen  using  as  a  business 
name  "Morton's  Special  Delivery." 
They  employed  many  agents,  who 
wore  upon  their  hats  a  badge  bearing 
conspicuously  the  name  "Morton" 
and  this  badge  became  familiar  to  the  f/^ 
pubHc  as  designating  plaintiff's  agents. 
Defendant,  John  Morton,  opened  a 
similar  business,  under  the  name  of 
"Morton's  Transfer  Company"  and 
his  agents  used  a  badge  similar  in  size, 
color,  and  appearance  to  that  of  plain- 
tiff's, bearing  the  word  "Morton's" 
in  letters  precisely  resembling  those 
on  plaintiff's  badge.  Held,  that  de- 
fendant   should    be    enjoined    from 


118       Family  Names  or  Surnames,  as  Trade  Names 

with  separate  descriptive  words  which  accurately  describe  the 
character  of  the  article  to  which  they  are  applied  will  not  be  en- 
joined. For  instance,  in  Brown  Chemical  Co.  v.  Meyer, '^^  plaintiff 
made  "Brown's  Iron  Bitters;"  and  later  defendant  began  to 
make  "Brown's  Iron  Tonic,"  and  put  the  tonic  up  in  containers  of 
different  size,  color,  and  appearance  and  with  different  labels  from 
that  used  by  plaintiff.  Injunction  was  refused  by  the  United 
.States  Supreme  Court,  which  said  that  the  words  "Iron  Bitters" 
are  descriptive  of  the  article  sold.  Every  man  has  a  right  to  his 
own  surname  for  a  legitimate  purpose,  provided  he  has  not  as- 
signed or  parted  with  this  right  to  the  use  of  it,  the  distinction 
between  lawful  and  unlawful  use  of  one's  own  name  being  illus- 
trated by  Croft  v.  Day  ^^  and  by  Holloway  v.  HollowayJ-'^ 

It  will  be  seen  by  the  foregoing  cases  that  there  is  a  marked 
difference  between  the  use  of  a  complete  name,  first  name,  middle 
name,  if  any,  and  surname,  and  the  use  of  the  surname  alone. 
The  likelihood  of  confusion  is  much  increased  in  the  latter  use. 
And  there  is  little  doubt  but  such  use  of  a  name  will  be  enjoined, 
while  the  injunction  will  often  be  refused  where  a  person  uses  his 
full  name.    See  Charles  E.  Hires  v.  George  A.  Hires.^^ 

§  75.  Names  Made  up  of  Surnames  Qualified  by  Other  Words 
or  Symbols.  —  The  mere  addition  of  qualifying  words  such  as 
"Famous,"  "Genuine,"  "Original,"  etc.,  will  not  take  a  name 
which  otherwise  would  be  similar  to  the  name  already  in  use,  out 
of  the  rules  of  unfair  competition.^^ 

using  a  badge  with  the  word  "Mor-  68  Ohio  St.  337-1893;  67  N.  E.  722; 

ton's."  62  L.  R.  A.  941.    "The  plaintiff's  al- 

Barber  v.  Manico,  10  R.  P.  C.  93-  leged  trade-mark  identified  *  *  * 
1893.  Defendant  enjoined  from  selling  a  'Croup  remedy'  which  originated 
in  Ireland  knives  marked  "Edward  with  one  Dr.  August  Drake,  a  German 
Barber"  where  plaintiff's  knives  were  physician  who  formerly  resided  in  the 
known  in  Ireland  as  "Barber's  knives"  State  of  Iowa,  and  from  whom  the 
and  were  stamped  "  Era  James  Barber,  plaintiff  obtained  the  fornmla.  In  that 
Sheffield,"  this  being  a  trade-mark  of  sense,  therefore,  the  plaintiff's  trade- 
plaintiff's,  mark  indicates  the  origin,  and  is  a 

4«  139  U.  S.  540-1890;  35  L.  ed.  247;  guarantee  of  the  character  and  qual- 

11  Sup.  Ct.  625.  ity   of   the   remedy   which   was  sold 

*»  7  Beav.  84-1843.  ■with  that  trade-mark  for  ten  years 

50 13  Beav.  209-1850.  before    the    defendant,    Warren    W. 

"  182   Pa.    St.    346-1897;   37   Atl.  Drake,  who  resided  during  all  of  that 

1117.  time  in  the  same  town  in  which  the 

*2  Drake  Medicine  Co.  v.  Glessncr,  plaintiff  conducted  his  business,  came 


Surnames  Acquired  Otherwise  than  by  Descent    149 


§  76.  Surnames   Acquired    Otherwise    than   by   Descent.  — 

A  person  who  bears  the  same  family  name  as  some  one  who  is 
running  a  business  under  the  common  surname  will  not  be  al- 
lowed to  sell  or  transfer  the  right  to  use  the  name  to  a  third  person 
who  has  no  interest  in  it,  when  the  vendor  has  never  carried  on 
the  business  in  which  the  third  person  is  engaged.  The  English 
Chancery  Division  has  held  that  a  person  cannot,  at  will,  confer 
the  right  on  others  to  use  his  surname.  Nor  can  he  hire  himself  to 
another  and  stipulate  that  the  other  shall  carry  on  the  business  in 
the  employee's  name,  when  such  a  transaction  would  cause  confu- 
sion with  the  business  of  another. ^^ 


into  the  market  with  his  competitive 
product.  Warren  W.  Drake  had  the 
right  to  make  and  sell  a  croup  rem- 
edy different  from  the  plaintiff's  com- 
pound using  his  own  name;  but  under 
the  circumstances  found  by  court 
below  he  could  only  do  so  in  such  an 
honest  and  legitimate  manner  that 
the  pubHc  would  not  be  deceived  nor 
his  competitor  defrauded.  For  the 
reasons  stated  and  upon  the  facts 
specially  found  by  the  circuit  court, 
which  are  conclusive  here,  we  are 
satisfied  that  the  plaintiff  has  such*' 
an  interest  in  the  words  'Dr.  Drake's 
German  Croup  Remedy'  as  a  trade- 
mark that  the  use  of  the  words  'Dr. 
Drake's  Famous  German  Croup  Rem- 
edy' by  the  defendants  is  an  infringe- 
ment thereof"  (p.  357). 

"  Tussaud  V.  Tussaud,  44  Ch.  Div. 
678-1890.  Plaintiff  carried  on  a  wax 
works  exhibition,  which  had  been 
founded  in  1802  by  Madame  Tussaud. 
The  wax  works  were  often  spoken 
of  as  "Tussaud's."  The  father  of 
the  defendant,  Louis  Joseph  Kenny 
Tussaud,  formerly  managed  the  exhi- 
bition for  the  plaintiff.  In  1890,  he 
opened  a  wax  works  under  the  name  of 
"  Louis  Tussaud,  Limited."  Circulars 
stated  that  he  had  no  connection  with 
the  plaintiff.  At  the  time  of  the  suit, 
the  defendant  had  not  carried  on  any 


exhibition  on  his  own  account  or 
modelled  any  figures  for  his  own  use. 
Stirling,  J.,  held  that  the  word  "Tus- 
saud" was  well  known  and  of  high 
reputation  in  connection  with  wax 
works,  and  visitors  who  had  heard 
of  the  plaintiff  company's  exhibition 
would  likely  be  misled  into  going  to 
see  the  other  company's  exhibition. 
The  question  was  whether  or  not, 
granting  that  the  defendant  company 
should  be  restrained,  the  defendant, 
himself  bearing  the  name  "Tussaud," 
should  be  restrained  also.  "I  con- 
ceive it  to  be  clear  that  the  defendant 
could  not,  either  for  valuable  consid- 
eration or  otherwise,  confer  on  an- 
other person  the  right  to  the  use  of 
the  name  of  'Tussaud'  in  connec- 
tion with  the  business  which  the  de- 
fendant had  never  carried  on,  and  in 
which  the  defendant  had  no  interest 
whatever.  Then  comes  the  question, 
can  he  confer  that  right  on  a  person  or 
a  company  toward  whom  he  stands 
simply  in  the  position  of  a  paid  serv- 
ant? He  could  no  doubt  confer  the 
right  of  saying  that  the  business  is 
under  his  management,  but  could  he 
go  to  the  same  private  individual  and 
say  to  him, '  I  will  become  your  servant 
as  manager  and  modeller  for  several 
years,  and  you  shall  carry  on  the  busi- 
ness (which  is  not  to  be  mine,  but 


150       Family  Names  or  Surnames,  as  Trade  'Names 


To  transfer  to  a  third  person  the  right  to  use  one's  surname 
when  one  knows  there  already  exist  business  names  containing 
that  surname,  which  will  be  injured  by  use  of  his  name  in  the 
same  line  of  business,  is  fraud  if  the  vendor  knew  of  the  use  to  be 
made  of  the  name  at  the  time  of  the  sale.^"* 


yours)  under  my  name?'  I  think  not. 
Would  it  make  any  difference  that, 
instead  of  going  to  a  private  individ- 
ual, he  invited  the  public  to  become 
proprietors  of  a  business  upon  the  like 
terms?  On  that  question  there  is,  I  do 
not  say  decision,  but  some  authority" 
(p.  688). 

Slonebraker  v.  Stonebraker,  33  Md. 
252-1870.  The  complainant,  Henry 
Stonebraker,  had  long  manufactured 
various  medicines  and  preparations 
that  were  widely  known  as  "Stone- 
braker's"  medicines  and  prepara- 
tions. Defendants  subsequently  em- 
ployed Abraham  S.  Stonebraker,  a 
doctor,  and  the  brother  of  the  com- 
plainant, in  the  manufacture  of 
similar  preparations  which  closely  re- 
sembled those  of  complainant,  and 
were  sold  as  "Dr.  Stonebraker's " 
medicines  and  preparations.  Wrap- 
pers and  general  get-up  were  imitated 
in  various  ways,  and  circumstances 
clearly  indicated  fraudulent  intention. 
Abraham  S.  Stonebraker  had,  for  a 
short  time  only,  some  years  before, 
manufactured  some  drugs  and  rem- 
edies to  which  he  applied  his  name. 
HchI,  that  defendants  were  not  en- 
titled so  to  use  the  name;  injunction 
granted. 

"  This  statement  approved  in  San- 
ford-Day  Iron  Works  v.  Enlerprise 
Foundry  &  Machine  Works,  172  So.  W. 
537  (Tenn.  Sup.  Ct.).  Ernesl  M. 
Burrow  v.  Theodore  Mnrceau,  124 
A.  D.  (N.  Y.)  065-1908;  109  N.  Y. 
Supp.  105.  Napoleon  Sarony  was  a 
successful  New  York  photographer 
prior  to  November  9,  JS9G,  when  he 


died.  October  7,  1898,  Otto  Sarony, 
his  executor,  sold  to  plaintitT's  assignor 
Sarony's  business  with  the  trade-mark 
"Sarony"  and  the  good-will  of  the 
business.  Later  this  executor  agreed 
with  Marceau  to  use  his,  Otto  Sarony's 
name,  or  any  part  of  it.  Marceau  then 
organized  the  "Otto  Sarony  Co.,  Pho- 
tographers"—  a  New  York  corpora- 
tion, in  which  Otto  Sarony  owned  one 
share  of  stock  —  the  consideration  for 
his  giving  the  concern  the  right  to  use 
his  name.  Held,  "The  object  of  this 
transaction  is  perfectly  apparent.  It 
was  not  an  attempt  of  a  man  to 
transact  business  in  his  own  name,  or 
to  transfer  to  another  the  good-will 
of  an  established  business.  Otto 
Sarony  did  not  intend  to  go  into  busi- 
ness using  his  own  name.  *  *  * 
The  only  object  he  (Marceau)  could 
have  was  thus  to  secure  some  of 
the  business  of  the  plaintiff.  *  *  * 
'Sarony'  meant  nothing  except  so  far 
as  it  represented  the  reputation  or  skill 
and  artistic  merit  of  the  business  trans- 
acted under  that  name.  It  was  a 
fraud  if  the  defendant  represented 
that  this  company  was  either  the  suc- 
cessor of  the  business  and  methods 
established  by  Napoleon  Saronj'^,  or 
that  any  member  of  the  Saronj^  family 
had  any  connection  with  it.  It  was  a 
fraud  upon  the  plaintiff,  in  that  by  the 
use  of  the  name  'Sarony '  it  indicated 
that  the  Sarony  who  had  established 
the  business  known  to  the  public  as 
Sarony's  photographic  establishment 
was  connected  with  it;  and  it  was  a 
fraud  for  Otto  Saronj-  to  make  such  an 
agreement  with  the  defendant  Mar- 


Voluntary  Change  of  Personal  Name 


151 


§  77.  Voluntary  Change  of  Personal  Name.  —  By  comply- 
ing with  the  statutory  regulations  which  exist  in  most  states, 
a  person  may  change  his  name.  If  he  does  this  and  then  uses  it  in  a 
way  to  injure  the  business  of  another  who  bears  the  name  the 
first-mentioned  person  has  adopted,  an  injunction  will  lie  re- 
straining the  use  of  the  adopted  name.^'"* 

Arbitrary  adoption  of  a  family  name  as  a  business  name  is  not 
allowable  when  one  does  not  bear  that  name  and  another  is  using 
the  name  in  business.  The  court  will  presume  that  such  an  act  is 
done  with  fraudulent  intent.  It  is  unfair  for  a  dealer  to  use  the 
name  of  his  manager  as  a  trade  name  for  his  business  or  goods 
when  that  name  is  the  name  under  which  a  competitor  carries  on 
business.  The  fact  that  it  is  the  manager's  name  will  not  excuse 
such  an  act.^^ 


ceau  when  he  had  transferred  the 
right  to  use  the  name  of  Sarony  with 
the  business  estabhshed  by  Napoleon 
Sarony  and  had  received  consideration 
therefor."  See  also  chapter  on  "  Good- 
Will,"  for  further  discussion  of  this 
question. 

5*  England  v.  N.  Y.  Publishing  Co., 
8  Daly  (N.  Y.),  375-1878.  Henry 
Carter  came  from  England  to  the 
United  States,  took  for  hie  name 
Frank  Leslie,  but  did  not  do  so  legally, 
and  published  various  periodicals 
known  as  "Frank  Leslie's"  and  widely 
circulated.  He  had  caused  his  son  to 
take  the  same  name  of  Frank  Leslie, 
and  he  was  christened  and  married 
under  that  name.  Subsequently,  in- 
fluenced by  threats  and  misrepresenta- 
tions on  the  part  of  his  father,  he 
assumed  the  name  Henry  Leslie,  al- 
though still  known  as  Frank  to  his 
wife  and  various  friends.  Afterward 
he  resumed  the  name  of  Frank,  and 
the  defendant,  of  which  he  was  one  of 
the  incorporators,  began  to  publish  a 
weekly  journal  entitled  "Frank  Leslie, 
Jr.'s  Sporting  &  Dramatic  Times." 
Neither  of  his  father's  publications 
dealt    especially     with     sporting    or 


dramatic  matters.  Held  no  infringe- 
meiit. 

F.  Pinet  et  Cie  v.  Madison  Louis 
Pinet,  Ltd.,  15  R.  P.  C.  65-1897;  see 
also  s.  c.  14  R.  P.  C.  933-1897.  Plain- 
tiffs had  a  well-established  business  in 
boots  and  shoes,  and  their  goods  were 
known  as  "Pinet"  boots  and  shoes. 
The  founder  of  the  defendant  com- 
pany had  repeatedly  changed  his 
name,  and  finally  adopted  the  name 
Pinet,  and  the  companj'^  formed  by 
him  began  dealing  in  boots  and  shoes, 
which  they  advertised  as  "Pinet's 
Special  Boots  and  Shoes,"  though  their 
prospectus  set  forth  that  they  had  no 
connection  with  F.  Pinet  et  Cie.,  of 
Paris.  Defendants  were  enjoined  from 
using  the  name  "Pinet"  in  any  way  in 
their  business. 

^''  Falk  V.  American  West  Indies 
Co.,  71  App.  Div.  (N.  Y.)  320-1902; 
75  N.  Y.  Supp.  964.  Plaintiff  used 
for  twenty  years  "El  Falcon"  as  the 
name  of  a  cigar;  defendant  adopted 
name  "El  Falco."  Fact  that  defend- 
ant's manager  was  named  G.  Lopez  y 
Falco,  when  he  did  not  swear  he  was 
known  by  that  full  name,  will  not 
permit   use   of   word    by   defendant. 


152       Family  Names  or  Surnames,  as  Trade  Names 

§  78.  Rights  Acquired  by  Him  Who  First  Uses  a  Surname 
in  Business.  —  The  first  appropriator  of  his  surname  as  a  trade 
name  may  adopt  the  name  alone,  without  any  accompanying 
word  or  symbol  by  way  of  prefix  or  suffix ;  and  if  he  does,  manufac- 
turers of  like  goods  having  the  same  name  may  not  use  it  upon 
their  goods,  unless  they  accompany  it  by  such  distinguishing 
devices  by  way  of  prefix  or  suffix,  that  a  buyer,  who  takes  note  of 
both  name  and  other  marks,  will  not  be  deceived.  If  consumers 
who  notice  nothing  but  the  name  are  deceived  and  there  is  loss  to 
either  in  consequence,  it  must  be  borne  as  the  result  of  the  act 
of  taking  a  family  name  as  a  trade  name;  but  if  the  first  appro- 
priator affixes  distinguishing  figures  or  words  or  symbols  to  his 
name,  the  second  may  not  use  his  name  in  connection  with  the 
same  marks,  figures,  symbols  or  words,  nor  with  such  marks  as  so 
resemble  those  of  the  first  that  the  similarity  and  association  will 
probably  mislead.  This  rule  does  not  apply  where  the  defendant, 
a  corporation,  chooses  its  own  name  and  it  appears  that  the  name 
was  selected  with  an  intention  to  defraud.  There  the  corporation 
is  entitled  to  little  consideration,  for  there  is  no  reason  for  in- 
corporators to  choose  a  name  likely  to  confuse,  while  there  is 
reason  for  an  individual  wishing  to  trade  under  his  own  name." 

"  Landreth    v.    Landreth,    22    Fed.  appearance  from  complainant's.    Pre- 

41-1884  (C.  C.  E.  D.  Wis.).     Com-  liminary  injunction  granted, 
plainants,    from    1873,    sold   peas   in         Clark  Thread  Co.  v.  Armitage,  67  Fed. 

bags  marked  in  blue  ink,  "Guaran-  896-1895  (C.  C.  S.  D.  N.  Y.),  affirmed 

teed    to    Contain    Landreth's    Extra  and  modified  74  Fed.  896.  Complainant 

Early  Peas,  Provided  the  Seal  is  Un-  was  a  New  Jersey  corporation  created 

broken,"    with    the    quantity    "1-4  in  1865.     Defendant  was  manager  of 

Bus.",   and  the  year.     These  goods  "William   Clark  Thread  Company," 

under  this  label  became  well  known  which  was  organized  in  New  Jersey 

to  the  trade  and  the  public.    In  1883,  in   1891,  and  sold  cotton  thread  as 

defendant  began  selling  peas  in  bags  "Clark's     N-E-W     Spool     Cotton." 

bearing  in  blue  ink,  the  inscription:  Complainant   alleged  .defendant  was 

"This  Bag  Contains  Landreth's  Ex-  putting  up  thread  in  a  way  to  lead 

tra  Early  Peas.    Provided  the  Seal  is  purchasers  to  believe  that  they  were 

Unbroken"  with  the  quantity   "1-4  buying  a  new  brand  of  the  complain- 

Bus."  and  the  year.     Held,  that  al-  ant's   thread.     Defendant's  company 

though  defendant  was  entitled  to  use  changed  its  name  to  "The  William 

his  own  name  and  perhaps  the  phrase  Clark    Company."     "The    chief    in- 

" Landreth's    Early    Peas"    he    was  corporator   was   Wilham   Clark.     He 

bound  to  differentiate  his  label  clearly,  was    at   liberty   to   avail   himself    of 

in  arrangement  of  words  and  general  whatever  reputation   he   had    gained 


Rights  of  Descendants  to  the  Family  Name        153 


This  is  specifically  held  in  Higgins  v.  Higgins  Soap  Co.,^^  a  widely 
cited  case.  In  this  connection  see  discussion  in  earher  part  of 
this  chapter. 

§  79.  Family  Names  as  Corporate  Names.  —  Family  names 
are  often  used  in  naming  corporations,  and  when  the  same  family 
name  is  used  in  two  corporations  confusion  and  injury  usually 
result.  Sometimes  this  is  the  result  of  intent,  sometimes  of  acci- 
dent, but  more  and  more  frequently  the  courts  are  finding  some 
means  of  preventing  the  use  of  these  corporate  names  in  such  man- 
ner as  to  cause  fraud  and  deception.  A  discussion  of  decisions  of 
this  character  will  be  found  in  the  chapter  on  "Corporate  Names." 

§  80.  Rights  of  Descendants  to  the  Family  Name  Used 
in  Business  by  an  Ancestor.  —  The  general  principle  is  that 
confusion  of  the  public  and  use  of  signs  and  advertisements 
calculated  to  make  the  public  think  one  concern  is  another  or  its 
successor,  is  no  sufficient  reason  for  taking  from  sons  ''the  right 
to  continue  the  business  to  which  they  were  bred  and  to  use  their 
own  name  in  doing  so."  ^^    So  strong  is  this  right  that  a  nephew 


as  a  thread  maker  while  in  the  employ 
of  the  complainant,  but  it  was  un- 
lawful for  him  so  to  act  that  the 
public  was  deceived  as  to  the  true 
condition  of  affairs. "  The  use  of  his 
name  to  name  a  corporation  was  "of 
doubtful  propriety  but  for  complain- 
ant's consent"  (id.  p.  901).  The  court 
was  of  the  opinion  "Clark's"  had  ac- 
quired a  secondary  meaning  relating 
to  thread  and  granted  injunction 
against  use  of  "Clark"  or  "Clark's." 
Valentine  Meat  Juice  Co.  v.  The 
Valentine  Extract  Co.,  Ltd.,  83  L.  T. 
N.  S.  259-1900,  17  R.  P.  C.  673.  The 
plaintiffs  were  incorporated  in  Vir- 
ginia in  1871.  Their  product  had  been 
sold  under  some  name  of  which  the 
name  "Valentine"  formed  a  part. 
Until  1898  no  other  preparation  con- 
nected with  the  name  of  Valentine  was 
on  the  market.  The  defendant  was 
incorporated  in  London,  1897.  It  was 
promoted  by  Charles  R.  Valentine. 
Its  product  was  first  sold  as  "Valen- 


tine's Valtine  Meat  Globules,"  the 
word  Valtine  being  a  shortening  of 
word  Valentine.  Complainants  al- 
leged that  defendants  used  the  word 
"Valentine"  in  such  a  way  as  to  de- 
ceive the  public  into  the  belief  that 
the  goods  sold  by  the  defendants  were 
manufactured  by  the  plaintiff.  In- 
junction granted  against  the  use  of 
both  "Valentine"  and  "Valtine." 

58 144  N.  Y.  462-1895,  18  N.  E.  714; 
39  N.  E.  490;  27  L.  R.  A.  42. 

5^  Donnell  v.  Herring-Hall-Marvin 
Safe  Co.,  208  U.  S.  267-74-1908; 
Duryea  v.  Manufacturing  Co.,  79 
Fed.  651-1897;  25  C.  C.  A.  L39,  2d 
Cir.  One  Duryea  and  his  brothers 
were  the  controlling  members  of  the 
Glen  Cove  Manufacturing,  Company, 
which  for  a  long  time  made  and  sold 
starch  in  packages  having  thereon, 
in  prominent  letters,  "Durj'^ea's 
Starch."  A  picture  of  the  manufac- 
turing buildings,  together  with  the 
name  of  the  corporation,  also  appeared 


154       Family  Names  or  Surnames,  as  Trade  Names 

who  bore  his  uncle's  exact  name  could  not  object  to  its  use  by 
another  nephew  who  did  not  bear  the  uncle's  full  name  but  who 
bore  the  name  as  his  family  name.^" 

The  individual  who  first  uses  a  name  as  a  trade  name  may 
dispose  of  it  in  its  trade  sense  in  connection  with  the  good-will  of 
his  business  as  he  does  of  other  property  —  by  will ;  and  if  he 
leave  no  will,  it  is  dealt  with  by  law  as  a  part  of  his  personal  prop- 
erty. His  descendants  may  inherit  it.  He  may  give  the  right  to 
use  it  in  the  trade  sense  to  one  child  to  the  exclusion  of  all  the 
others  or  to  someone  entirely  outside  of  the  family,  to  the  exclu- 
sion of  all  its  members.  In  such  cases  it  has  been  held  that  no  one 
of  the  family  can  use  the  name  to  damage  or  injure  the  property 
of  him  who  has  thus  acquired  it. 

A  person  may  dispose  of  the  right  to  use  his  name  as  a  trade 
name  in  connection  with  a  particular  article,  in  such  a  way  as 
to  prevent  his  children  from  using  the  name  in  selling  that  article 
in  any  manner  which  will  injure  the  rights  sold  by  the  father. 
A  The  Supreme  Court  of  the  United  States  in  Donnell  v.  Herring- 
Hall-Marvin  Safe  Co.,^^  has  held  that,  where  a  father,  Hall  by 
name,  did  business  under  a  corporate  name  of  which  the  name 
Hall  was  part,  and  the  corporation  and  the  corporate  name  was 
sold,  the  vendee  is  entitled  to  an  injunction  against  sons  of  said 
Hall,  forbidding  use  of  "any  name,  mark,  or  advertisement,  in- 
dicating that  the  plaintiff  (the  son)  is  the  successor  of  the  original 
company,  or  that  its  goods  are  the  product  of  that  company  or  its 
successors,  or  interfering  with  the  good-will  bought  from  it."  ^^ 

on  the  packages,  and  the  starch  and  Mfg.  Co.  v.  Dimjea,   101   Fed.   117- 

the     corporation    became    identified  1900  (C.  C.  A.  2d  Cir.). 

with  tlie  name.     Thereafter  the  busi-  '"'  Emerson  v.  Badger,  101  Mass.  82- 

ness  was  sold  to  another  corporation,  1869. 

which  continued  the  use  of  the  words  "'  208  U.  S.  267-74-1908. 

and  pictures  with  its  own  name.     Dur-  "-  Citing  Howe  Scale  Co.  v.  Wyck- 

yea,  having  subsequently  withdrawn  off,  Seamans  &  Benedict,   198  U.  S. 

from  the  company,  furnishal  capital  118-1905;  49  L.  ed.  972;  25  Sup.  Ct. 

to  his  sons,  wlio  thcrc^after  procured  609;  Singer  Mfg.   Co.  v.  June  Mfg. 

other  starch  to  be  made  for  them,  and  Co.,  163  U.  S.  169-1895;  41  L.  ed. 

sold  it  as  starch  "Prepared  by  Duryea  118;  16  Sup.  Ct.  1002. 

&  Co.,"  etc.,  without  imitation  of  la-  DonneU  v.  Herring-Hall-Marvin  Safe 

bcls  or  packages.    Held,  that  tliis  was  a  Co.,  208  U.  S.  267-1908  (Hohnes,  J.). 

proper  use  by  Duryea  and  his  sons  of  The  Herring-Hall-Marvin  Safe  Com- 

their  own  name,  and  could  not  be  pany  was  formed  in  1892  to  take  over 

enjoined.     See   also   National  Starch  an  old  business,  founded  by  Joseph  L. 


Rights  of  Descendants  to  the  Family  Name        155 

In  the  case  of  Herring-H all-Marvin  Safe  Co.  v.  HaWs  Safe 
Co.,^^  a  contract  of  sale  specified  that  along  with  the  plant,  pat- 
terns, stock  of  safes,  accounts,  papers,  etc.,  it  was  intended  to 
convey  all  ''trade-marks,  patent  rights,  trade  rights,  good-will, 
and  all  its  property  and  assets  of  every  name  and  nature,"  and 
agreed  that  the  business  "is  taken  over  in  all  respects  as  a  going 
concern."  The  question  was  as  to  the  rights  of  sons  of  the  original 
Hall,  who  founded  the  Hall  business  and  the  reputation  enjoyed 
by  ''Hall's  Safes."  Held,  that  the  "Hall's  Safe  &  Lock  Co.,"  a 
corporation  founded  by  Hall  (the  stock  of  which  belonged  to 
his  children  and  estate) ,  acquired  what  reputation  the  name  Hall 
enjoyed.  The  good-will  belonged  to  that  company.  The  sons,  by 
this  transfer,  did  not  lose  the  right  to  use  the  name  Hall  in  the  safe 
business,  if  used  with  proper  explanations  accompanying  their 
every  use  of  it.  An  absolute  prohibition  against  using  the  name 
Hall,  it  was  held,  would  carry  trade-marks  too  far.  Therefore,  the 
rights  of  the  two  parties  were  there  reconciled  by  allowing  the 
use,  provided  that  an  explanation  was  attached.  The  sons  might 
have  left  the  old  company  and  set  up  for  themselves.  "They 
might  have  competed  with  it  (the  old  company);  they  might 
have  called  attention  to  the  fact  that  they  were  the  sons  of  the 

Hall,  of  making  safes,  which  had  be-  company  organized  by  the  two  sons. 

come  well  known  as  "Hall's  Safes,"  Held,  that  these  sons  and  the  com- 

the  business  being  transferred  by  a  pany  formed  by  them  had  the  right 

corporation    controlled    by    the    Hall  to  use  the  name  "Hall"  in  connection 

family.     The  selling  corporation  was  with  their  business  and  in  describing 

dissolved,  and  Edward  C.  Hall  became  their  safes,  subject  to  the  duty  not  to 

the  president,  and  another  son  of  the  mislead  the  public  by  the  form  of  any 

founder   treasurer   of   the   new   com-  name,  sign,  mark,  or  advertisement, 

pany,  under  contracts  by  which  their  into  supposing  them  to  be  successors 

services   were  secured   for  a   certain  to  the  old  business,  or  their  safes  to  be 

period.      Upon    the    termination    of  made    by    the    Herring-Hall-Marvin 

these  contracts  the  two  sons  organ-  Company.  It  does   not  appear  very 

ized  an  Ohio  corporation  to  engage  in  specifically  just  what  use  of  the  name 

a  competing  business  of  making  safes.  the  court  would  have  deemed  admis- 

Donnell  was  the  president  of  an  Illinois  sible.    The  decree  below  had  enjoined 

corporation,   the   Hall   Safe   &    Lock  the  marking  or  advertising  of  safes. 

Company,   which,   although   Donnell  or  the  carrying  on  of  business,  with 

had   been  the   selling   agent   of   the  or  under  any  name  of  which  the  word 

Herring-Hall-Marvin  Company,  now  "Hall"  was  a  part.    This  decree  was 

began  at  the  same  place  and  with  the  reversed, 
old  sign,  "Hall's  Safes,"  to  sell  the  "^  208  U.  S.  554-1908. 

safes  made  by  the  competing  Ohio 


153       Family  Names  or  Surnames,  as  Trade  Names 


man  who  started  the  business;  they  might  have  claimed  their 
due  share,  if  any,  of  the  merit  in  making  Hall's  Safes  what  they 
were,''''  but  they  would  have  been  at  the  disadvantage  that  some 
names  and  phrases,  otherwise  truthful  and  natural  to  use,  would 
convey  to  the  public  the  notion  that  they  were  continuing  the 
business  done  by  the  company  or  that  they  were  in  some  privity 
with  the  established  manufacture  of  safes  which  the  public  al- 
ready knew  and  liked.  To  convey  such  a  notion  would  be  fraud 
and  would  be  stopped.  Therefore,  such  names  and  phrases  could 
be  used  only  if  so  explained  that  they  would  not  deceive"  ^^ 


«<  White  V.  Trowbridge,  216  Pa.  St. 
11;64  Atl.  862. 

^^  Hardy  v.  Cutter,  3  U.  S.  Pat. 
Gaz.  468-1873  (as  cited  in  16  Phila. 
182).  Plaintiffs  manufactured  "Cut- 
ter's Whiskey,"  as  successors,  by 
purchase,  of  J.  H.  Cutter,  and  branded 
their  barrels  "J.  H.  Cutter  — Old 
Bourbon."  Defendant,  a  son  of  J.  H. 
Cutter,  also  manufactured  whiskey, 
marking  it  "J.  F.  Cutter,  son  of  the 
late  J.  H.  Cutter,"  etc.  The  marks 
resembled  each  other  only  in  the  use 
of  the  name  "Cutter."  Held,  that 
defendant  was  entitled  to  use  his 
own  name  in  this  way;  injunction 
denied. 

Van  Stan's  Stratena  Co.,  Ltd.,  v.  Van 
Stan,  209  Pa.  St.  564-1904;  58  Atl. 
1064.  Frederick  Van  Stan  had  in- 
vented a  peculiar  kind  of  cement 
which,  for  some  time  prior  to  1876,  he 
had  manufactured  and  sold  in  Eng- 
land as  "Van  Stan's  Stratena  Co. 
Cement."  In  1876  he  transferred  to 
one,  who,  in  1878,  assigned  to  plaintiff 
the  sole  right  to  make  and  sell  the 
cement  in  the  United  States,  with  the 
use  of  the  name  and  trade-mark.  In 
1889  defendant,  Victor  F.  Van  Stan,  a 
son  of  Frederick  Van  Stan,  came  to 
the  United  States,  was  employed  for 
some  years  by  plaintiff,  and  became 
familiar  with  the  business  and  the 
customers.    He  left  plaintiff's  employ 


and,  after  an  interval,  returned  to 
Philadelphia,  where  he  began  selling  an 
article  labeled  "Victor  F.  Van  Stan's 
Cementive"  and  sometimes  advertised 
as  "Van  Stan's  Improved  Cement." 
His  circulars,  labels,  and  wrappers 
were  in  various  ways  misleading. 
Held,  that  defendant  was  not  entitled 
thus  to  use  his  own  name  in  describing 
and  advertising  his  cement.  Citing 
Russia  Cement  Co.  v.  LePage,  147 
Mass.  206-1888;  17  N.  E.  304,  and 
other  cases. 

Robinson  v.  Storm,  103  Tenn.  40- 
1899;  52  S.  W.  880.  In  1872  Dr. 
Mitchell  prepared  a  cathartic  for- 
mula which  he  put  into  the  hands 
of  Stever  &  Robinson,  druggists,  to 
perfect  so  as  to  make  it  palatable. 
Dr.  Mitchell  claimed  no  interest  in  the 
formula.  He  prescribed  it,  soon  after 
he  invented  it,  for  Captain  Storm,  a 
citizen  of  wide  influence,  wlio  recom- 
mended it  so  generally  that  it  soon 
acquired  a  wide  reputation.  Stever  & 
Robinson,  with  his  consent,  then  put 
it  up  and  sold  it  as  "Storm's  Liver 
Regulator,"  out  of  compliment  to 
Captain  Storm.  In  1873  Robinson 
bought  out  Stever  and  became  sole 
owner  of  the  formula.  Captain  Storm 
died,  and  his  child,  the  defendant, 
asked  Dr.  Mitchell  to  aid  him  to 
acquire  the  formula  that  he  might 
sell   the  medicine.     The  doctor  de- 


Rights  of  Descendants  to  the  Family  Name        157 


(id.  p.  559).  It  has  been  held  that  the  fact  that  there  was  no 
person  by  the  name  of  Chickering  connected  with  the  concern 
making  Chickering  pianos  in  Boston,  gave  no  right  to  other  per- 
sons who  bore  the  same  name,  to  set  up  a  piano  business  and  hold 
themselves  out  as  being  the  only  Chickerings  making  pianos,  thus 
giving  the  impression  that  they  were  the  rightful  heirs  of  and 
successors  to  the  name.'^'^ 

This  same  name  was  considered  in  Chickering  v.  Chickering,^'' 
in  which  the  last  mentioned  case  was  followed  and  the  defendants 
enjoined  from  the  use  of  the  name  ''Chickering"  as  the  name  of  a 
piano,  from  advertising  that  they  were  connected  with  the  original 
clined.      He    then    obtained    another      medicine  came  into  use,  and  Robin- 


formula,  which  he  put  on  the  market 
as  "Storm's  Liver  Regulator."  Both 
labels  have  the  catch  words  "Storm's 
Liver  Regulator;"  the  bottles  are  of 
same  general  shape,  the  neck  of  de- 
fendant's bottles  being  a  little  longer 
than  those  of  plaintiff's.  The  recom- 
mendations on  each  bottle  are  not 
exactly  the  same,  but  similar.  The 
cartons  vary  in  color,  but  not  enough 
to  place  purchasers  on  guard.  On 
both  cartons  and  labels  the  word 
"Storm's"  is  very  prominent.  Com- 
plainant's carton  had  mortar  and 
pestle,  surrounded  by  black  rim  and 
words  "Storm's,"  "Only  the  best," 
and  "Prepared  by  Jas.  S.  Robinson, 
Apothecary,  Memphis,  Tenn."  De- 
fendant's carton  had  picture  of  Cap- 
tain Storm  and  words  "Storm's  Liver 
Regulator,"  and  "Prepared  by  em- 
inent chemists  for  A.  G.  Storm,"  and 
"This  is  not  the  medicine  put  up  by 
James  S.  Robinson,"  and  in  this  the 
word  "  Robinson  "  is  prominent .  Held, 
it  is  sufficient  that  between  the  two 
labels  there  is  a  simulation  "likely  to 
deceive  an  incautious  and  ordinary 
purchaser."  Decree  forbade  use  of 
the  words  "Storm,"  "Captain  Storm," 
and  "Storm"  in  connection  with 
words  "Liver  Regulator,"  and  also 
the  use  of  the  description  of  how  the 


son's  name  on  bottles,  etc.,  and  also 
forbade  the  use  of  Robinson's  formula, 
etc. 

8"  Chickering  v.  Chickering  &  Sons, 
120  Fed.  69-1903  (C.  C.  A.  7th  Cir.). 
Two  men  named  Chickering  set  up 
business  in  Chicago  for  manufacture 
of  pianos.  Chickering  &  Sons  were 
in  same  business  in  Boston  and  had 
been  since  death  of  last  Chickering 
connected  with  said  company  some 
years  before.  Defendants  advertised  a 
sketch  of  Chickering  family  and  their 
"famous  piano,"  concluding  with  this 
statement:  "By  right  of  purchase 
this  name  will  continue  to  be  used 
on  the  Boston  Piano,  but  by  reason 
of  their  kinship  and  because  of  their 
long  practical  training  under  the 
'Chickering  System'  the  fact  is  prop- 
erly advanced  that  'the  only  piano 
made  by  a  Chickering '  is  now  made  in 
Chicago  by  Chickering  Brothers." 
The  expression  "The  onlj^  piano  made 
by  a  Chickering"  was  cast  into  their 
piano  frames  and  inserted  in  their 
catalogues.  Held,  that  injunction  was 
properly  granted  restraining  use  of 
word  Chickering  on  ground  of  unfair 
competition. 

67  215  Fed.  490-1914  (C.  C.  A.  7th 
Cir.  1914). 


158       Family  Names  or  Surnames,  as  Trade  Names 

Chickering  by  relationship,  and  in  other  ways  forbidden  to  "make 
use  of  the  good-will  and  reputation  of  the  Chickering  piano"  in 
selling  their  goods. 

Similarly,  an  injunction  has  been  granted  forbidding  a  son 
from  selling  goods  under  the  family  surname  when  the  father  was 
using  the  name  in  the  same  business.  This  was  the  decision  in 
Gouraud  v.  Trust,^^  where  the  defendants  were  sons  of  the  plaintiff 
and  plaintiff  had  been  long  engaged  in  selling  a  cosmetic  called 
"T.  Felix  Gouraud's  Oriental  Cream  and  Magical  Beautifier." 
Defendants  began  to  make  a  cosmetic  they  called  "Creme  Orien- 
tal by  Dr.  T.  F.  Gouraud's  Sons." 

If  a  widow  continues  a  business  belonging  to  the  deceased  hus- 
band, it  seems  she  cannot  transfer  the  exclusive  right  to  use  the 
father's  name  to  one  of  her  sons  to  the  exclusion  of  others,  for  all 
the  children  had  equal  rights  to  the  use  of  the  name.^^ 

The  North  Carolina  courts  have  held  that  descendants  of 
one  Bingham,  who  estabhshed  a  "Bingham  School"  at  Mebane, 
N.  C,  may  continue  the  school  although  another  school  called 
"Bingham  School"  had  been  established  at  Asheville;  and  that 
both  schools  may  use  the  name  because  no  confusion  could  arise 
as  the  schools  are  not  in  the  same  locality.^"    The  case  of  Ball  v. 

«8  6  Thomps.  &  Cook  (N.  Y.),  133-  a  school  at  Mebane,  N.  C.  (site  of  old 

1875.  school),  under  name  "William  Bing- 

85  Marshall    v.    Pinkham,    52    Wis.  ham  School,"  and  claim  it  was  or- 

572-1881;  9  N.  W.  615.  ganized  in  1793  and  conducted  by  the 

'"^Bingham  School  v.  Graij,  122  N.  Binghams  since,  and  they  have  right 

C.  699-1898;  41  L.  R.  A.  243;  30  S.  E.  to  name  Bingham  School.     Held,  as 

304.    The  Bingham  School  was  estab-  defendants  are  widow  and  children  of 

lished  in  1793  by  one  Wm.  Bingham,  Wm.  Bingham,  and  are  on  site  of  old 

and  in  1864  was  incorporated  as  The  school,   they   can  use  words   "Bing- 

Bingham  School.     The  charter  pro-  ham    School"    or    "Wm.    Bingham 

vided:     "Nothing    herein    contained  School."     "That  the  plaintiff  is  in- 

shall  prejudice  the  original  and  ulti-  corporated  as  the  'Bingham  School' 

mate  right  of  property  in  the  name  of  does  not  give  it  the  exclusive  right  to 

said    school    pertaining    to    William  that  name;  another  corporation  might 

Bingham  as  representative  of  the  name  be  created  by  and  operated  under  the 

and  reputation  of  the  school."     The  same  title,  when  not  in  the  same  lo- 

charter  having  expired  Robt.  Bingham  cality,  in  the  absence  of  an  intent  to 

had   it  again  incorporated   in   1895.  injure    the    first    named    corporation 

In  1875  Wm.  Bingham  died,  left  all  or  to  avail  itself  fraudulently  of  the 

his  property  to  widow  for  life,  then  to  other's  good  name  and  reputation." 

children.     Defendants  are  his  widow  Citing  Farmers'  Loan  &  Trvsl  Co.  v. 

and  children,  who  are  now  conducting  Farmers'  Loan  &  Trust  Co.  of  Kan- 


Prefixes,  Suffixes  and  First  Names  159 

Best  ^^  is  distinctly  at  variance  with  this  decision,  and  it  seems 
with  good  reason;  for  while  no  doubt  in  years  past,  confusion 
would  be  quite  unlil<:ely,  under  modern  conditions  of  easy  com- 
munication and  in  view  of  the  facilities  offered  by  newspapers 
and  periodicals,  one  of  these  schools  might  easily  avail  itself  of  the 
reputation  of  the  other  in  the  minds  of  the  persons  not  familiar 
with  local  history  and  conditions. 

The  right  of  a  son  to  use  his  father's  name  and  the  limitations 
upon  this  right  in  equity  are  shown  in  Frazier  v.  DowlingP 
Waterfill  and  Frazier  (father  of  plaintiff)  made  "Waterfill  and 
Frazier  Whiskey."  Frazier  died.  Appellees  came  into  control  of 
his  business.  Frazier's  son  then  formed  a  partnership  with  J.  W. 
Waterfill,  a  cousin  of  his  father's  partner,  to  distill  whiskey  in 
another  county.  They  marked  their  whiskey  in  various  ways  and 
finally  began  to  mark  it  ''Waterfill  and  Frazier,  Distillers,  etc.," 
the  exact  label  of  the  old  firm,  and  were  enjoined  from  using  this 
brand.  Held,  ''that  this  combination  did  not  represent  the  name 
of  either  of  the  partners  in  the  new  firm.  If  the  sole  object  in 
using  this  combination  was  to  tell  the  truth  it  does  not  do  so  any 
more  than  *  *  *  'G.  G.  Frazier  &  Co.,'  or  'J.  M.  Water- 
fill  &  Co.,'  both  of  which  names  this  new  firm  discarded." 

Here,  then,  was  an  evident  attempt  by  descendants  to  use  a 
right  to  a  father's  name  and  a  family  name  for  the  purpose  of 
passing  themselves  off  as  persons  they  were  not,  as  owning  and 
carrying  on  a  business  they  did  not  own  and  did  not  carry  on. 
This  question  of  Rights  of  Descendants  is  considered  in  the  chap- 
ter on  "Transfer." 

§  81.  Prefixes,  Suffixes  and  First  Names.  —  Mere  use  of  a  first 
name  with  a  surname  aheady  in  use  by  others  will  not  save  such 
use  from  a  charge  of  fraud.^^ 

"But  he  made  prominent  in  every  way  the  name  of  Guth,  and 
evidently  relied  for  success  upon  the  popularity  of  candies  asso- 
ciated with  that  name.  True,  he  made  use  of  his  full  name, 
"Charles  G.  Guth,"  instead  of  the  surname  "Guth,"  or  "Au 

sas,  1  N.  Y.  Supp.  44-1888;  21  Abb.  '•  135  Fed.  434-1905  (C.  C.  N.  D. 

N.  C.   104.     "Certainly  there  could  111.). 

be  no  confusion  between  a  Bingham  "  39  S.  W.  45-187;  198  Ky.  L.  Rep. 

School  at  Asheville  and  one  at  Me-  1109. 

bane"    (id.  p.  707).     Injunction   de-  '^  Guth  v.  Guth,  224  Fed.  934-1915 

nied.  (C.  C.  A.  4th  Cir.). 


160       Family  Names  or  Surnames,  as  Trade  Names 

Guth,"  which  he  had  previously  employed;  but  it  is  the  sur- 
name which  catches  the  public,  and  few  purchasers  would  notice 
the  difference  between  one  form  and  the  other.  In  the  nature  of 
things,  confusion  was  inevitable." 

In  Repetti  v.  Repetti,  the  plaintiff  was  a  corporation  using  as  a 
name  the  one  word  "Repetti."  The  defendant  incorporated 
as  ''Louis  Repetti,  Inc.,"  and  GofT,  J.,  enjoined  the  defendant 
from  using  the  name.'^^"  In  Romeike  v.  Romeike  the  plaintiff  was 
a  corporation  using  the  name  "Henry  Romeike."  The  defend- 
ant was  incorporated  by  former  officers  of  the  plaintiff  under  the 
name  "Albert  Romeike,  Inc."  Held  that  the  defendant's  use  of 
its  corporate  name  was  unfair  competition.^^'' 

The  resemblance  between  two  similar  labels  appeals  to  the 
eye;  a  family  name  used  as  a  trade  name  or  part  of  a  trade  name 
appeals  to  the  ear.  The  general  look  of  a  label,  the  "tout  en- 
semble," as  Judge  Brewer  calls  it  in  Lorillard  v.  Peper,^^  is  what 
the  public  remembers.  It  is  the  name  in  common  use,  the 
nickname,  if  you  will,  not  its  full  name,  that  becomes  the  real 
name  —  for  instance,  "Baker  Chocolate,"  not  "Walter  Baker  & 
Co.'s  Chocolate,"  becomes  known  to  the  public  by  advertising 
and  by  the  merits  of  the  goods,  and  purchasers  remember  that 
name.  For  Wm.  H.  Baker  to  sell  chocolate  as  "Baker's  Choco- 
late" was  to  commit  a  fraud  on  Walter  Baker  &  Co.'^^  The  name 
used  by  the  defendant  may  be  almost  an  exact  counterpart  of  that 
of  the  complainant,  and  yet  no  unfair  competition  results.^^ 
Again  there  may  be  many  points  of  difference  between  them  and 
yet  the  use  of  the  defendant's  name  may  be  unfair. 

""  Repetti  v.  Louis  Repetti  Inc.  et  al,  '»  Walter  Baker  &  Co.  v.  Baker,  77 

6  Trade-Mark  Rep.  94.  Fed  181-1896. 

''^'^  Henry    Romeike    Inc.    v.   Albert  '"^  Brown  Chemical  Co.  \.  Meyer,  \^^ 

Romeike   &   Co.  Inc.,  7  Trade-Mark  U.  S.  540-1890;  35  L.  ed.  247;  11  Sup. 

Rep.  16.  Ct.  625. 

'"  86  Fed.  956-1898  (at  p.  960). 


CHAPTER  VII 

Corporate  Names 

Section  82.  Effects  of  a  state  charter  on  names  of  corporations. 

83.  Effect  of  incorporation  of  a  business  on  its  right  to  its  name. 

84.  Foreign  and  domestic  corporations  —  rights  of,  as  to  name. 

85.  Right  to  name  on  dissolution. 

86.  Names  of  charitable  corporations. 

87.  Incorporating  under  nickname  of  rival. 

88.  Abbreviations  of  corporate  names. 

89.  Affirmative  duty  to  differentiate  in  choosing  corporate  names. 

90.  Family  names  as  names  of  corporations. 

91.  What  is  evidence  of  fraud  in  use  of  a  corporate  name. 

92.  Rights  arising  out  of  priority  in  use  of  corporate  names. 

93.  Use  of  term  "works,"  "company,"  etc.,  by  an  individual  or  part- 

nership. 

94.  Outgoing  stockholders  and  employees. 

95.  False  or  misleading  use  of  corporate  names. 

96.  Names  of  unincorporated  societies,  clubs,  etc. 

97.  Names  of  fraternal  societies. 

98.  Similarity  of  corporate  names,  what  is? 

Chief  Justice  Fuller  contends  that  there  is  no  distinction 
between  rules  applying  to  names  used  as  corporate  names  and 
those  applying  to  names  used  by  a  finn  or  partnership.  He  says: 
"But  if  every  man  has  the  right  to  use  his  name  reasonably  and 
l^ionestly,  in  every  way,  we  cannot  perceive  any  practical  dis- 
tinction between  the  use  of  the  name  in  a  firm  and  its  use  in  a 
corporation.  It  is  dishonesty  in  the  use  that  is  condemned, 
whether  in  a  partnership  or  corporate  name,  and  not  the  use  it- 
self." ' 

There  is,  however,  one  important  difference  between  corporate 
names  and  other  names.  It  is  found  in  the  fact  that  the  choice  of 
a  corporate  name  is  the  result  of  a  deliberate  act  of  the  incorpo- 
rators, while  the  firm  or  partnership  that  uses  the  personal  names 
of  its  members  uses  a  name  to  which  they  have  a  certain  right. 

^Howe  Scale  Co.  v.  Wyckoff,  Sea-  at  p.  136;  1905,  49  L.  ed.  972;  25 
mans   &   Benedict,    198   U.    S.    118-      Sup.  Ct.  609. 

161 


162  Corporate  Names 

The  rule  in  this  regard  is  clearly  set  out  in  Chas.  S.  Higgins  Co. 
V.  Higgins  Soap  Co.^'^ 

Personal  names,  like  one's  parents,  are  not  of  one's  own  choos- 
ing; but  a  corporate  name  is  chosen  by  the  incorporators  them- 
selves; hence  it  is  in  their  power  to  make  it  what  they  will.  That 
being  the  case,  their  rights  arising  from  its  possession  are  less 
important  and  their  responsibility  for  its  use  is  greater  than  in  the 
case  of  their  own  personal  names. ^ 

Bradley,  J.,  says  in  Celluloid  Mfg.  Co.  v.  Cellonite  Mfg.  Co.,"^^ 
*'As  to  the  imitation  of  the  complainant's  name.  The  fact  that 
both  are  corporate  names  is  of  no  consequence  in  this  connection. 
They  are  the  business  names  by  which  the  parties  are  known,  and 
are  to  be  dealt  with  precisely  as  if  they  were  the  names  of  private 
firms  or  partnerships.  The  defendant's  name  was  of  its  own 
choosmg,  and,  if  an  unlawful  imitation  of  the  complainant's, 
is  subject  to  the  same  rules  of  law  as  if  it  were  the  name  of  an 
unincorporated  firm  or  company.  It  is  not  identical  with  the 
complainant's  name.  That  would  be  too  gross  an  invasion  of  the 
complainant's  right.  Similarity,  not  identity,  is  the  usual  re- 
course when  one  party  seeks  to  benefit  himseK  by  the  good  name 
of  another."  ^ 

Incorporators  of  a  company  choose  a  name  at  their  peril.  They 
will  be  presumed  to  know  the  names  under  which  the  probable, 

1"  Charles  S.  Higgins  Co.  v.  Higgin's  cases,  not  on  the  ground  that  the  state 

Soap  Co.,  144  N.  Y.  462:  1895.  may  not  affix  such  corporate  names  as 

2  Above  statement  approved,  Bates  it  may  elect  to  the  entities  it  creates, 

Mfg.  Co.  V.  Bates  Mach.  Co.,  172  F.  but  to  prevent  fraud,  actual  or  con- 

896.  structive."     Per  Andrews,  C.  J. 

2"  32  Fed.  94  (C.  C.  D.  N.  J.)  1887.  Hazelton  Boiler  Co.v.  Hazelton  Tripod 

^SeesLhoChas.S.HigginsCo.v.Hig-  Boiler  Co.,   137  111.  231-33-1891;  28 

gins'  Soap  Co.,  144  N.  Y.  462-68-1895;  N.  E.  248.     "The  right  of  a  corpora- 

39  N.  E.  490;  27  L.  R.  A.  42.    "In  re-  tion  to  the  use  of  its  name  can  be  no 

spcct  to  corporate  names  the  same  rule  greater  or  different  in  principle  than 

applies  as  to  the  names  of  firms  or  that  of  an  individual." 

individuals,  and  an  injunction  lies  to  Merchants'  Detective  Assn.  v.  Detective 

restrain  the  simulation  and  use  by  one  Mercantile  Agency,  25  111.  App.  250- 

corporation  of  the  name  of  a  prior  1888.  A  corporate  name  "  is  entitled  to 

corporation  which  tends  to  create  con-  be  protected  in  its  use  upon  the  same 

fusion  and  to  enable  the  latter  corpora-  '  principle  and  at  least  to  the  same  ex- 

tion  to  obtain,  by  reason  of  the  similar-  tent   that   individuals  are  protected 

ity  of  names,  the  business  of  the  prior  in  the   use   of   trade-marks"    (at   p. 

one.     The  courts  interfere  in  these  255). 


Effect  of  Incorporation  of  a  Business  163 

existing  competitors  of  the  new  company  are  doing  business. 
The  choice  of  a  name  colorably  similar  to  that  used  by  a  com- 
petitor, is  evidence  of  fraud,  especially  if  it  is  likely  that  the  new 
corporation  will  profit  by  the  confusion  that  will  result  from  the 
similarity  between  its  names  and  that  of  a  competitor.^ 

§  82.  Effects  of  a  State  Charter  on  Names  of  Corporations.  — 
The  statutes  of  the  various  states  provide  for  the  registration  of 
corporate  names,  but  forbid  the  registration  of  names  so  nearly 
identical  with  those  already  registered  as  to  create  confusion,  or 
the  incorporation  of  companies  which  bear  names  colorably  similar 
to  corporate  names  already  in  use.  The  provisions  of  these  stat- 
utes are  not  uniform  but  vary  with  the  different  states.  The 
fact  that  the  defendant  corporation,  in  a  suit  for  unfair  com- 
petition involving  its  name,  has  been  chartered  by  some  state 
government,  does  not  afford  it  a  defense  or  immunity  from  ac- 
tion against  it  in  a  federal  court  or  state  court  by  a  corporation 
of  another  state,  where  the  name  adopted  is  used  to  compete 
unfairly  with  the  complainant  company.^ 

§  83.  Effect  of  Incorporation  of  a  Business  on  its  Right  to  its 
Name.  —  The  incorporation  of  an  organization  does  not  alter  in 
any  way  its  rights,  as  against  those  of  another  concern  using  the 
same  or  a  similar  name.  The  act  of  incorporation  gives  it  no  right 
to  demand  that  a  rival  desist  from  using  the  common  name.  The 
Supreme  Court  of  the  United  States  has  said:  "There  is  no  dis- 
tinction between  corporations  and  natural  persons  in  the  prin- 
ciple, which  is  to  prevent  fraud."  ^  If  damage  is  suffered  by  the 
corporation  it  must  bear  it;  for  it  arises  out  of  the  folly  of  de- 

^  Metropolitan,   etc.,   Co.   v.   Metro-  tors  in  imitation  of  complainant's,  for 

politan,  etc.,  Co.,  156  A.  D.  577  (N.  Y.)  the  fraudulent  purpose  of  deceiving 

May,  1913.  the   pubUc   and    appropriating    com- 

^  Peck  Bros.   &  Co.  v.  Peck  Bros,  plainant's  good-will  and  reputation" 

Co.,  113  Fed.  291-1902  (C.  C.  A.  7th  (reporter's  note).   Fort  Pitt  Building  & 

Cir.) ;  62  L.  R.  A.  81.     "The  fact  that  Loan  Assn.,  etc.,  v.  Model  Plan  Build- 

a  corporation  has  been  chartered  by  ing  &  Loan  Association,  159  Pa.  St. 

a  state  under  a  certain  name,  which  308-1893;  Newby  v.   Oregon  Central 

it  selected,  does  not  afford  it  immunity  Ry.   Co.,    1   Deady,   609-1869;   Fed. 

from  a  suit  in  a  federal  court  by  a  Cas.   No.    10,144.     See  also   Oneida 

corporation  of  another  state  to  enjoin  Community  v.  Oneida  Game  Trap  Co., 

it  from  prosecuting  its  business  under  168  App.  Div.  769  (N.  Y.)  1915. 

such  a  name,  where  the  name  was  ^  Waterman  v.  Modern  Pen  Co.,  235 

deliberately  adopted  by  its  incorpora-  U.  S.  88-94-1914. 


164 


Corporate  Names 


liberately  incorporating  under  a  name  the  incorporators  knew  or 
ought  to  have  known  had  they  used  proper  dihgcnce  and  care,  was 
already  being  used.  Furthermore,  persons  desiring  to  incorporate 
under  a  name  they  have  previously  used  as  the  name  of  an  or- 
ganization not  incorporated,  are  not  barred  from  so  doing  because 
of  the  fact  that  others  had  incorporated  under  that  name  subse- 
quent to  the  time  they  began  to  use  it  as  a  name  of  an  unincor- 
porated organization.  If  they  were  the  first  to  use  the  name  and 
to  become  known  by  it,  they  cannot  be  denied  the  right  to  in- 
corporate under  that  name,  because  others  have  adopted  their 
name,  and  preceded  them  in  incorporating  under  it.  Any  damage 
y  resulting  to  the  plaintiffs  from  such  incorporation  is  chargeable 
'  to  their  folly  in  choosing  a  name  already  in  use.^ 


^  Grand  Lodge  of  the  Ancient  Or- 
der of  United  Workmen  of  the  State 
of  Iowa  V.  Graham,  96  Iowa  592;  65 
N.  W.  837;  31  L.  R.  A.  133-1895; 
The  court's  opinion  in  this  case  was 
substantially  as  follows:  The  ques- 
tion is  on  the  exclusive  right  of  the 
plaintiff  to  the  name  Grand  Lodge  of 
the  Ancient  Order  of  United  Workmen 
of  Iowa  and  the  letters  G.  L.  A.  O.  U. 
W.  of  Iowa.  It  was  argued  that  in- 
corporating under  this  name  and 
receiving  a  certificate  from  the  state 
to  do  business  under  this  name,  the 
plaintiff  became  entitled  to  its  exclu- 
sive use.  The  defendants  had  the 
prior  right  to  the  name,  and  the  fact 
that  they  were  not  incorporated  is 
wholly  immaterial.  The  plaintiff,  in 
amending  its  articles  of  incorporation, 
and  in  securing  its  certificates  from 
the  state  auditor,  has  taken  the  name 
wliich  was  formerly  used  by  the  de- 
fendants, and  of  which  they  cannot 
be  deprived,  simply  because  the  plain- 
tiff sees  fit  to  use  it  as  its  corporate 
name.  A  corporation  cannot  insist, 
after  recording  its  articles,  that  any 
person  or  persons  abandon  the  name 
which  they  have  previously  selected 
and  under  which  they  are  operating. 


Any  damage  resulting  is  due  to  the 
folly  and  indiscretion  on  the  part  of 
the  second  corporation  in  selecting  a 
name  already  in  use. 

Lane  v.  Brothers  &  Sisters  of  the 
Evening  Star  Society,  120  Ga.  355-1904; 
47  S.  E.  951.  An  incorporated  mutual 
benefit  society,  the  "Brothers  &  Sisters 
of  the  Evening  Star  Society,"  main- 
tained or  controlled  a  dependent  or 
branch  society,  not  separately  incorpo- 
rated, entitled  "Sons  and  Daughters  of 
the  Evening  Star  Society."  Certain 
persons,  who  had  been  officers  of  the 
branch  society,  repudiated  the  author- 
ity of  the  incorporated  society,  and  ap- 
plied for  a  corporate  charter  under  the 
name  of  "Sons  and  Daughters  of  the 
Evening  Star  Society."  Held,  that  they 
should  be  restrained  by  injunction 
from  prosecuting  their  appUcation 
for  a  charter  under  this  name.  The 
injunction  covered  other  matters  also; 
such  as  the  control  of  bank  funds, 
etc. 

American  Clay  Mfg.  Co.  of  Pa.  v. 
American  Clay  Mfg.  Co.  of  N.  J.,  198 
Pa.  St.  189-91-1901;  47  Atl.  936. 
Both  parties  possessed  the  corporate 
name  "American  Clay  Manufacturing 
Company."      Complainant    was    or- 


Rights  of  Foreign  and  Domestic  Corporations     165 


§  84.  Foreign  and  Domestic  Corporations  —  Rights  of,  as 
to  Name.  —  According  to  the  rules  prevaihng  in  some  jurisdic- 
tions, foreign  corporations  must  be  subordinated  to  domestic 
corporations  so  far  as  the  pohcy  of  any  state  is  concerned;  for  a 
state  is  bound  to  protect  and  assist  first  those  companies  incor- 
porated under  its  own  laws,  and  the  rights  of  citizens  of  other 
states  must  be  subordinated  to  the  rights  of  the  domestic  com- 
pany. The  Illinois  courts  go  so  far  as  to  hold  that  a  foreign  com- 
pany has  no  standing  in  its  courts  to  contest  a  right  to  use  a  name 
which  the  state  has  bestowed  on  one  of  its  own  companies.^ 

We  do  not  believe  this  doctrine  is  generally  followed.  Most 
jurisdictions  uphold  the  common-law  rights  which  are  acquired  in 
a  name  by  usage  regardless  of  the  jurisdiction  in  which  it  may 


ganized  in  Pennsylvania,  defendant 
in  New  Jersey.  Plaintiff  made  brick 
for  buildings  and  contemplated  mak- 
ing fire-proofing  brick.  Defendant 
made  fire  brick  and  sewer  pipes. 
Later  defendant  put  under  its  name 
the  words,  "of  New  Jersey"  in  red 
ink.  No  intended  injurj^  is  alleged, 
but  much  confusion  resulted  because  of 
the  similarity  of  the  names.  Defend- 
ant incorporated  subsequently  to  the 
plaintiff  and  began  to  do  business  in 
Pennsylvania  after  plaintiff  had  be- 
gun business  there.  Held:  "In  case 
of  associations  voluntarily  formed 
and  named,  whether  chartered  or  not, 
there  is  an  opportunity  to  avoid  such 
difficulty  by  refraining  from  choosing 
a  name  identical  with,  or  similar  to, 
that  of  associations  already  in  exist- 
ence." The  defendant's  name  caused 
plaintiff  injury  and  plaintiff  had  no 
remedy  at  law,  and  hence  the  case  was 
within  the  jurisdiction  of  equity, 
Held  also  that  the  injury  was  not  de 
minimis. 

^  Hazelton  Boiler  Co.  v.  Hazellon 
Tripod  Boiler  Co.,  142  111.  494-1892; 
30  N.  E.  339.  "The  Hazelton  Boiler 
Company"  was  organized  June  23, 
1888,  in  New  York.     "Hazelton  Tri- 


pod Boiler  Company"  was  organized 
February  29,  1888,  in  lUinois.  Plain- 
tiff was,  therefore,  incorporated  after 
defendant.  "But  the  complainant  is 
in  the  attitude  of  a  foreign  corpora- 
tion coming  into  this  state  and  seek- 
ing to  contest  the  right  to  the  use 
of  a  corporate  name  which  this  state, 
in  furtherance  of  its  own  public 
policy  and  in  the  exercise  of  its  own 
sovereignty,  has  seen  fit  to  bestow 
upon  one  of  its  own  corporations. 
For  such  a  purpose,  a  foreign  cor- 
poration can  have  no  standing  in  our 
courts.  Such  corporations  do  not 
come  into  this  state  as  a  matter  of ' 
legal  right,  but  only  by  comity,  and 
they  cannot  be  permitted  to  come  for 
the  purpose  of  asserting  rights  in 
contravention  of  our  laws  or  public 
policy.  It  is  competent  for  this  state, 
whenever  it  sees  fit  to  do  so,  to  debar 
any  or  all  foreign  corporations  from 
doing  business  here,  and  whatever  it 
may  do,  by  way  of  chartering  cor- 
porations of  its  own,  cannot  be  called 
in  question  by  corporations  which  are 
here  only  by  a  species  of  legal  suf- 
ferance" (id.  p.  505).  The  United 
States  courts  have  refused  to  follow 
this  case. 


166 


Corporate  Names 


have  been  incorporated,  as  against  rights  which  a  company  ac- 
quires by  the  mere  act  of  incorporation.^ 

§  85.  Right  to  Name  on  Dissolution.  —  It  has  been  held  that 
where  a  corporation  has  ceased  to  exist,  the  stockholders  are 
partners  so  far  as  the  name  goes,  and  all  have  an  equal  right  to  it. 
It  would  seem  that  those  of  them  who  first  used  the  name,  without 
objection  on  the  part  of  the  others,  would  be  entitled  to  it.^" 

§  86.  Names  of  Charitable  Corporations.  —  The  fact  that  a 
corporation  is  an  eleemosynary  or  charitable  one  and  has  no  goods 
to  sell,  and  does  not  make  money,  does  not  take  it  out  of  the 
protection  of  the  law  of  unfair  competition.  Distinct  identity  is 
just  as  important  to  such  a  company,  oftentimes,  as  it  is  to  a 
commercial  company.  Its  financial  credit  —  its  al^iUty  to  raise 
funds,  its  general  reputation,  the  credit  of  those  managing  it  and 
supporting  it,  are  all  at  stake  if  its  name  is  filched  away  by  some 
other  organization,  and  the  two  become  confused  in  the  minds  of 
the  public.  The  existence  of  two  charitable  organizations  in  one 
city  —  or  even  in  one  section  of  the  country,  both  of  which  bore 


9  Farmers'  Loan  &  Trust  Co.  v. 
Farmers'  Loan  &  Trust  Co.  of  Kan- 
sas, 1  N.  Y.  Supp.  44-1888;  21  Abb. 
N.  C.   104. 

BlackwelVs  Durham  Tobacco  Co.  v. 
American  Tobacco  Co.  (N.  C),  59  S.  E. 
123-1907.  Plaintiff,  a  domestic  corpo- 
ration, sought  to  enjoin  a  defendant, 
"Blackwell's  Durham  Tobacco  Com- 
pany of  New  Jersey,"  from  conducting 
a  competing  business  under  that  name. 
It  was  not  alleged  or  shown  that  plain- 
tiff had  been  incorporated,  or  had  used 
the  name  in  business,  prior  to  its  use  by 
ydefendant.     Held,  that  plaintiff  was 

tj'not  entitled  to  the  injunction;  that 
the  fact  that  it  was  a  domestic  corpo- 
ration did  not  entitle  it  to  use  its 
name  as  against  the  rights  acquired  by 
user  by  the  foreign  corporation;  and 
that  plaintiff  could  not  raise  the  point 
that  defendant  had  not  complied  with 
the  statutory  requirements  for  doing 
business  in  North  Carolina,  this  being 


a  matter  that  could  be  availed  of  only 
by  the  state. 

^°  Ottoman  Cahvey  Co.  v.  Dane,  95 
111.  203-1880.  In  1875,  defendants 
and  Adams  organized  a  corporation 
under  laws  of  Michigan  called  "the 
Ottoman  Cahvey  Co.,"  which  did  busi- 
ness in  Chicago.  In  1878,  Adams  and 
others  organized  a  corporation  under 
the  Illinois  laws  —  "The  Ottoman 
Cahvey  Co.,"  located  in  Cliieago, 
This  company  was  the  complainant. 
Held,  so  far  as  complainant  was  con- 
cerned, defendants  had  a  prior  right 
to  the  name.  Defendants  had  as 
much  right  to  use  the  name  as  the 
complainant.  As  the  complainant 
had  shown  no  equitable  ground  for 
relief,  the  bill  was  dismissed.  The 
ground  on  which  the  complainant 
asked  relief  was  that  the  Michigan 
corporation  no  longer  legally  existed. 
That  being  so,  the  incorporators  were 
partners  and  had  a  right  to  any  name 
they  saw  fit  to  use. 


Names  of  Charitable  Corporations 


167 


names  in  which  tlie  words  ''Young  Women's  Christian  Associa- 
tion" appeared,  could  not  but  be  a  distinct  injury  to  one  or  the 
other.  The  evils  of  such  a  condition  are  clearly  shown  in  the  cases 
given  in  the  note  below.  ^^ 


11  International  Committee  Y.  W.  C. 
A.Y.Y.W.C.  A.  of  Chicago,  194  III. 
194-1902;  62  N.  E.  551;  56  L.  R.  A. 
888.  The  appellee  is  one  of  a  large 
number  of  associations  of  women, 
who  have  operated  under  the  name 
of  "The  Women's  Christian  Asso- 
ciation" or  "The  Young  Women's 
Christian  Association."  Appellee  in- 
corporated in  1877  under  the  name 
"The  Women's  Christian  Associa- 
tion," which  name  was,  in  1887, 
changed  to  "The  Young  Women's 
Christian  Association  of  Chicago." 
Two  local  associations  had  been 
organized  in  Chicago,  the  previously 
chosen  field  of  appellee,  under  the 
names,  respectively,  of  "  The  North 
Chicago  Young  Women's  Christian 
Association,"  and  "  The  West  Chicago 
Young  Women's  Christian  Associa- 
tion," and  in  furtherance  of  that  work, 
the  appellant  has  issued  and  circulated 
through  the  mails  a  publication  known 
as  "  The  Young  Women's  Christian 
Association  Quarterly,"  which  was 
latterly  succeeded  by  "  The  Young 
Women's  Christian  Association  Evan- 
gel; "  "Much  confusion  has  arisen  on 
account  of  the  similarity  in  name  of 
the  appellant  and  appellee.  Letters 
intended  for  the  one  have  been  de- 
livered to  the  other;  visitors  intend- 
ing to  call  upon  the  one  have  called 
upon  the  other,  and  donations  in- 
tended for  the  one  have  been  received 
by  the  other  *  *  *."  (at  pp.  197, 
198).  "Such  name  was  adopted  by 
the  appellant  advisedly,  and  for  the 
purpose  of  leading  the  general  pub- 
lic, and  the  persons  with  whom  it 
was  likely  to  be  associated,  and  from 


whom  it  hoped  and  expected  to  ob- 
tain support  by  way  of  donations, 
to  believe  that  it  stood  as  the  com- 
mittee and  representative  of  the  asso- 
ciations known  as  'The  Young  Wo- 
men's Christian  Association,'  then 
organized  in  the  field  where  it  ex- 
pected to  operate.  *  *  *  Such 
conduct,  in  law,  amounts  to  a  fraud 
upon  the  pubhc  and  appellee.  While 
it  is  true  that  generic  terms  or  mere 
descriptive  words  are  the  common 
property  of  the  public,  and  not  ordi- 
narily susceptible  of  appropriation 
by  an  individual,  that  fact  will  not 
prevent  the  issuing  of  an  injunction 
to  restrain  the  use  of  such  terms  and 
words,  at  the  suit  of  one  who  has  al- 
ready adopted  them,  where  the  evi- 
dence shows  a  fraudulent  design  and 
the  public  will  be  misled"  (id.  p. 
199).  "We  are  of  the  opinion  the 
Appellate  Court  properly  held  that 
the  name  of  the  appellant  is  so  similar 
to  the  name  of  the  appellee  and  so 
arranged  as  to  deceive  and  mislead  the 
public  into  believing  that  the  ap- 
pellant is  the  appellee,  or  a  committee 
or  representative  of  appellee  and  the 
conference  with  which  it  affiliates, 
and  properly  directed  the  superior 
court  to  grant  a  perpetual  injunction 
against  the  appellant,  restraining  it 
from  using  the  name  'International 
Committee  of  Young  Women's  Chris- 
tian Association,'  or  any  other  color- 
able imitation  thereof,  etc.,  as  prayed 
for  in  said  original  and  supplemental 
bills"  (id.  p.  201).  The  fact,  that  a 
name  is  not  used  in  a  commercial 
business  or  trade  will  not  prevent 
equity  enjoining  its  use  where  such 


168  Corporate  Names 

The  New  York  Supreme  Court,  on  application  for  prelimi- 
nary injunction,  has  held  that  a  corporation  organized  for  pur- 
poses of  gain  should  not  be  allowed  to  use  words  or  names  which 
have  "ac(iuired  a  special  appUcation  by  reason  of  the  charitable 
nature  of  the  plaintiff's  services  to  the  poor  and  helpless."  ^^ 

The  protection  accorded  at  present  to  charitable  and  educa- 
tional corporations  against  the  use  of  their  reputation  is  inade- 
quate. Vassar  College  v.  Loose-Wiles  Biscuit  Co.,^^  is  a  good 
illustration  of  this  fact.  Here  the  court  refused  to  prevent  the 
biscuit  maker  from  selling  '^ Vassar  Chocolates."  The  adver- 
tising displayed  the  Vassar  Pennant  and  Seal.  The  court  rested 
its  refusal  to  enjoin  the  defendant  in  Marlin  v.  Shields, ^^^  (see  com- 
ment on  this  case,  p.  498).  It  is  difficult  to  see  how  such  a  decree 
could  have  been  granted  in  the  Vassar  Case  if  the  proposition 
was  urged  upon  the  court,  that  a  corporation  has  a  property  right 
in  its  reputation  —  its  ''celebrity,"  and  its  good  name.  Such 
property  right  is  the  basis  of  various  statutes  passed  in  recent 
years  to  protect  rights  of  this  sort  and  of  various  decisions  for- 
bidding use  of  personal  reputation  to  promote  some  commercial 
enterprise.  ^^ 

This  decision  has  been  criticised  and  rightly,  it  would  seem.  It 
attempts  to  show  that  the  interest  of  a  college  in  its  name  is  dif- 
ferent from  that  of  a  business  house.  True,  the  Biscuit  Company 
is  not  in  competition  with  the  college,  yet  the  Biscuit  Company 
is  undoubtedly  using  the  reputation  of  the  college  to  sell  its  candy. 
On  this  point  the  New  York  Law  Journal  says:  ''There  ought 
to  be,  and  we  believe  that  in  principle  there  is,  remedy  in  law 
and  in  equity  against  pirating  for  commercial  purposes  things 
which  attach  in  a  measure  like  property  to  a  business,  and  that 
courts  ought  to  be  alert  to  sec  to  their  protection  when  the  doing 

use  interferes  with  some  other  name.  '^  Legal  Aid  Society  v.  Wage  Earn- 

"The   right   to   injunctive   rehef   de-  ers'   Legal  Aid  Assn.,   N.   Y.   L.   J., 

pends  upon  the  use  by  one  party  of  a  April  21,  1908,  DowHng,  J. 

name    or    corporate    designation    of  '^  197  Fed.  982:  W.  D.  Mo.,  1912. 

another  so   as   to   interfere  with  its  ^^  171  N.  Y.  384-1902. 

biisijiess,  whatever  it  may  be  —  not  ^^  Pavesich  v.  A^.  E.  Life  Ins.  Co., 

necessarily  a  commercial  or  trading  122  Ga.  190;  Edison  v.  Edison  Mfg. 

business."     The  Society  of  the  War  of  Co.,  73  N.  J.  Eq.  136;  Foster-Milburn 

1812  V.  The  Society  of  the  War  of  1812  Co.  v.    Chinn,  134  Ky.  424;  Mwulen 

in  the  State  of  Neiv  York,  46  App.  Div.  v.  Harris,   153  Mo.  652,   134  S.   W. 

(N.  Y.)  568-1900,  62  N.  Y.  Supp.  355.  1076. 


Abbreviations  of  Corporate  Names  109 

of  this  not  only  serves  to  vindicate  private  right,  but  subserves 
public  policy  independently  of  that  vindication. 

''The  judge  seems  not  to  have  approached  the  decision  of  this 
case  in  this  view  and,  had  he,  possibly  he  might  have  concluded 
that  such  an  institution  as  Vassar  College  had  a  substantial  claim 
against  the  influence  of  'distaste'  for  it  in  popular  view.  One  of 
the  chief  est  assets  of  a  college  or  university  is  that  it  is  regarded  by 
the  public  in  a  proper  way.  It  is  expected  to  encourage  ideals 
that  are  wholly  foreign  to  the  every-day  material  view." 

This  case  is  typical  of  a  class  of  cases  where  even  though  the 
parties  are  not  in  competition,  injury  to  the  plaintiff  is  inevitable 
from  the  defendant's  acts,  which  to  say  the  least  are  attempts  to 
use  good-will  and  reputation  of  the  plaintiff  for  the  defendant's 
profit  and  against  the  plaintiff's  will. 

This  view  is  borne  out  by  the  statement  of  Scott,  J.:  "It  is  of 
no  moment  that  the  defendants  are  not  at  present  competing  for 
business  with  either  of  the  corporations  plaintiff.  Injunctions  to 
prevent  the  misappropriation  of  corporate  names  are  not  limited 
to  business  corporations.  They  have  been  issued  to  protect 
the  use  of  the  name  of  a  fraternal  benevolent  society  (citing 
cases) ,  *  *  *  The  public  policy  of  the  State  *  *  *  forbids 
the  use  of  misleading  names  by  corporations  of  any  character."  ^^ 

A  college  or  university  has  an  interest  in  its  name  that  is  just 
as  definite,  just  as  specific  as  that  of  a  business  corporation  in  its 
name.  So  far  as  equity  protects  property  rights  in  names,  the 
name  of  a  charitable  corporation  stands  on  a  par  with  other 
corporate  names. 

§  87.  Incorporating  under  Nickname  of  a  Rival.  —  It  is 
fraudulent  to  use  as  a  corporate  name,  a  nickname  of  a  rival  or  of 
his  goods.  In  the  Oneida  Trap  Case,  the  plaintiff's  traps  were 
widely  known  as  "Oneida  Traps,"  and  plaintiff  itself  was  known 
as  the  "Oneida  Trap  Co."  Defendant  incorporated  under  "<. 
the  name  "Oneida  Game  Trap  Co."  An  injunction  was  granted 
forbidding  the  further  use  of  this  corporate  name.^^ 

§  88.  Abbreviations  of  Corporate  Names.  —  Corporate  names, 
like  personal  names,  are  used  as  trade  names;  but  the  weight  of 
authority  is  against  the  proposition  that  a  corporate  name  is  a 

"  Metropolitan  Tel.  &   Tel.  Co.  v.  '^  Oneida     Community     v.     Oneida 

Id.,  156  App.  Div.  (N.  Y.)  577;  1st      Game  Trap  Co.,   168  A.  D.   (N.  Y.) 
Dept.,   May,   1913.  769-1914. 


170  Corporate  Names 

trade-mark.  In  Newby  v.  Oregon  Cent.  Ry.  Co.,^^  it  was  held  that 
"the  corporate  name  of  a  corporation  is  a  trade-mark  from  the 
necessity  of  the  thing."  (Headnote.)  Merchants'  Detective  Assn. 
V.  Detective  Mercantile  Agency, ^"^  and  Investor  Publishing  Co.  of 
Mass.  V.  Dobinson,^^  are  to  the  same  effect.  ''Although  not 
technically  a  trade-mark,  the  authorities  are  in  favor  of  holding 
that  a  corporate  name  deserves  the  same  consideration  as  a 
trade-mark;  some  even  going  so  far  as  to  hold  that  it  is  a  trade- 
mark, and  will  be  protected  as  such.  In  most  of  these  cases,  how- 
ever, it  will  be  found  that  the  use  of  the  name  was  connected  with 
some  article  of  merchandise,  and  was  adopted  and  used  by  a 
manufacturer,  merchant,  or  corporation  in  order  to  designate  the 
goods  that  they  manufactured  or  sold  and  to  distinguish  them 
from  those  manufactured  or  sold  by  others,  to  the  end  that  they 
might  be  known  in  the  market  as  his."  ^^ 

Corporate  names  or  parts  of  these  names  when  used  to  desig- 
nate goods  or  business  houses,  or  as  trade  "nicknames,"  are  trade 
names  pure  and  simple,  in  most  instances,  and  can  be  protected  as 
such.  The  commercial  nickname,  or  abbreviated  name,  is  often 
more  valuable,  far  better  known,  and  more  carefully  guarded 
from  use  by  rivals  than  the  formal  or  full  name  from  which  it  is 
taken.  Hence  it  is  that  the  law  of  trade  names  applies  fully  to 
the  names  of  corporations.  "U.  M.  C."  for  Union  MetaUic 
Cartridge  Co.;  "Winchester,"  for  Winchester  Repeating  Arms 
Co.;  "Equitable,"  for  Equitable  Life  Assurance  Society;  "C.  B. 
&  Q.,"  for  Chicago,  Burlington  &  Quincy;  "B.  &  A.,"  for  Boston 
&  Albany,  are  instances  of  such  nicknames.  One  hears  or  sees  the 
full  corporate  name  used  seldom  in  comparison  to  the  number  of 
times  the  nickname  is  used.  And  these  abbreviations  are  capable 
of  protection  under  the  rules  of  Unfair  Competition.  A  corpora- 
tion will  be  enjoined,  regardless  of  its  actual  name,  if  it  does 
business  under  any  name  which  is  similar  to  that  of  a  rival.  For 
instance,  the  "International  Trust  Co."  was  a  Massachusetts  cor- 
poration. The  defendant  was  chartered  in  Missouri  as  the  "Na- 
tional Loan  and  Trust  Company,"  and  then  changed  its  name  to 

'«  1  Deady,  609-1869;  Fed.  Cas.  No.  "  Farmers'   Loan   &    Tnist   Co.   v. 

10,144.  Farmers'  Loan  &  Trust  Co.  of  Kan- 

"  25  111.  App.  250-1888.  sas,  1  N.  Y.  Supp.  44-1888;  21  Abb. 

's  72  Fed.  003-1896;  modified  in  82  N.  C.  104. 
Fed.  50-1897. 


Duty  to  Differentiate  in  Choosing  Names         171 

"International  Loan  &  Trust  Company."  This  change  made  the 
names  of  the  two  companies  very  similar.  Defendant  did  business 
in  Boston  where  plaintiff  also  did  business.  It  was  held  by  the 
Massachusetts  court  on  the  question  as  to  whether  a  foreign 
corporation  could  be  enjoined,  that  if  a  foreign  corporation  carries 
on  its  business  under  a  name  the  same  or  nearly  identical  with 
that  of  a  domestic  corporation,  it  should  be  enjoined.  The  public 
may  be  misled  and  the  domestic  corporation  suffer.  The  foreign 
corporation  ought  not  to  be  allowed  to  escape  liability  on  the 
ground  that  while  the  name  that  it  actually  uses  is  the  same  or 
similar,  its  corporate  name  is  not.  Even  if  the  corporate  name  of  a 
foreign  corporation  is  the  same  or  nearly  identical  with  that  of  a 
domestic  corporation,  if  it  carries  on  its  business  under  a  different 
and  dissimilar  one,  there  is  no  reason  why  it  should  be  enjoined. 
''No  harm  would  be  done  and  nobody  would  suffer."  -° 

Speaking  of  the  name  ''Williams  Soap"  Baker,  J.,  has  said: 
"With  the  fraudulent  imitations  of  cartons  and  labels  out  of  the 
way,  the  use  of  'Williams  Soap'  as  the  name  of  the  appellant 
company  has  all  the  effect  of  a  falsehood.  The  public  would  be 
likely  to  beheve  that  'Baker's  Chocolate'  Company,  'Hall's  Safe' 
Company,  'Williams  Soap'  Company,  'Bates  Numbering  Ma- 
chine' Company,  were  respectively  the  makers  of  those  well- 
known  products  if  no  explanations  were  made."  -^ 

§  89.  Affirmative   Duty   to   Differentiate   in    Choosing    Cor^ 
porate  Names.  —  No  name  may  be  chosen  in  naming  a  corpo-  • 
ration  which  will  cause  the  new  corporation  to  be  passed  off  as 
some  other  company  already  in  existence,  or  that  will,  when  at- 
tached to  the  goods  made  by  the  new  company,  pass  those  goods 
off  as  the  goods  of  some  other  company.^-    There  are  statutes  re- 
lating to  choice  of  corporate  names,  but  they  are  all  state  statutes; 
so  that,  except  for  the  names  already  in  use  by  corporations    / 
created  under  the  laws  of  the  home  state,  the  incorporators  can 
take  any  name  — but  at  their  peril;  and  if  the  incorporators 
choose  a  misleading  name,  they  may  be  enjoined,  although  their 

"">  International  Trust  Co.  v.  Inter-  "  Cited  with  approval  Bates  Mfg. 

national  Loan  &  Trust  Co.,  153  Mass.  Co.  v.  Bates  Numbering  Mach.   Co., 

271-1891;  26  N.  E.  693;  10  L.  R.  A.  172    Fed.    895;    also    in    Hartzler   v. 

753.  Goshen    Churn    &     Ladder    Co.,    55 

"  Williams  v.   Williams,   193  Fed.  Ind.  App.  455-1914;  104  N.  E.  Rep. 

384-387-1911  (C.  C.  A.  7th  Cir.).  34. 


172 


Corporate  Names 


L" 


company  be  organized  under  the  laws  of  a  state  far  away  from 
the  home  state  of  the  complainant.-^ 

The  court  scans  the  facts  that  it  may  decide  whether  the  use  of 
the  defendant's  name  will  cause  confusion  in  the  public  mind  and 
consequent  injury  to  the  plaintiff.  This  is  hardly  an  open  ques- 
tion in  most  instances,  for  on  the  incorporators  rests  the  affirm- 
ative duty  of  differentiating  the  name  of  a  new  corporation  from 
the  names  of  concerns  with  which  the  new  company  will  compete.^* 
The  duty  to  differentiate  is  not  changed  or  lessened  because 
the  conflicting  name  already  in  use  is  a  name  not  of  another  cor- 
poration, but  of  a  firm  or  an  individual  operating  under  a  name 
not  his  own.-^ 

§  90.  Family  Names  as  Names  of  Corporations.  —  One  of  the 
most  common  ways  of  naming  a  corporation  is  to  use  the  personal 
name  of  one  or  more  of  the  incorporators.     The  rules  applicable 


"  Cited  with  approval,  78  111.  App. 
207;  American  Order  of  Scottish  Clans 
V.  Merrill,  151  Mass.  558;  24  N.  E. 
918;  8  L.  R.  A.  320-1890.  "When 
there  are  no  statute  provisions  as 
to  the  choice  of  names,  and  parties 
organize  a  corporation  under  general 
laws,  it  may  be  that  they  choose  the 
name  at  their  peril,  and  that  if  they 
take  one  so  like  that  of  an  existing 
corporation  as  to  be  misleading  and 
thereby  to  injure  its  business,  they 
may  be  enjoined  if  there  is  no  lan- 
guage in  the  statute  to  the  contrary." 

American  Wine  Co.  v.  Kohlman,  158 
Fed.  830-1907  (C.  C.  Ala.).  Com- 
plainant was  a  Missouri  corporation 
well  known  in  the  wine  trade  by  its 
corporate  name,  American  Wine  Com- 
pany. Defendant  was  afterward  in- 
corporated in  Alabama  under  the  same 
name.  There  was  no  allegation  of 
similarity  of  dress,  or  of  the  use  of  any 
deceptive  device,  nor  of  facts  showing 
fraud  on  the  part  of  defendant  or 
injury  to  complainant.  Held,  that 
the  mere  similarity  of  name,  under 
these  circumstances,  did  not  entitle 
the  plaintiff  to  relief. 


"  Cited  in  Hartzler  v.  Goshen  Churn 
&  Ladder  Co.,  104  N.  E.  Rep.  34; 
F.  E.  De  Long  v.  De  Long  Hook  & 
Eye  Co.,  89  Hun  (N.  Y.),  399-1895; 
35  N.  Y.  Supp.  509.  In  1899,  the 
plaintiffs  put  on  the  market  the  "De 
Long  Hook  and  Eye,"  sewed  on  cards 
at  top  of  which  was  printed  "The  De 
Long  Hook  and  Eye."  In  1892  O.  A. 
De  Long,  a  buyer  of  a  department 
store,  conceived  a  change  in  the  hooks 
and  formed  the  De  Long  Hook  &  Eye 
Co.,  and  put  hooks  on  cards  in  the 
same  manner  as  plaintiffs.  Held, 
similarity  of  the  two  hooks  (for  they 
were  not  identical)  was  sufficient  to 
warrant  injunction.  "The  promoters 
of  this  corporation  could  have  given 
to  it  the  name  of  either  of  the  other 
incorporators,  or  any  other  name  they 
liked,  provided  the  designation  was 
honestly  made  and  without  injury  to 
others"  (p.  403).  See  also  Martin  v. 
Martin,  71  Atl.  409. 

^5  Imperial  Mfg.  Co.  v.  Schwartz, 
105  111.  App.  525-1903.  See  also 
Matsell  V.  Flanagan,  2  Abb.  Pr.  N.  S. 
(N.  Y.)  459-1867. 


Family  Names  as  Names  of  Corporations  173 

to  it  are  practically  the  same  as  those  relating  to  the  use  of  per- 
sonal names  in  other  trade  names  such  as  partnership  names  and 
are  to  be  found  in  the  chapter  entitled  "Family  Names."  There 
is,  however,  this  difference,  as  has  been  already  observed,  and  it  is 
a  substantial  one.  As  the  law  now  stands,  when  a  natural  person 
starts  business  under  his  own  name  a  duty  rests  upon  him  to  so 
use  that  name  as  to  prevent  confusion  between  his  house  and  goods 
and  the  house  and  goods  of  any  other  person  by  the  same  family 
name  in  the  same  business.  When,  however,  a  person  causes  the 
organization  of  a  corporation  a  much  greater  burden  and  duty 
rests  upon  him.  If  his  use  of  his  surname  as  a  part  of  the  cor- 
porate name  will  cause  confusion  between  his  new  corporation  and 
its  rivals  he  may  not  use  his  name  in  the  corporate  name  at  all. 

The  Scottish  courts  have  held  that  it  is  unfair  to  give  a  corpora- 
tion a  name  which  contains  the  same  family  name  as  that  which 
is  a  part  of  the  name  of  a  concern  already  in  that  line  of  business, 
and  an  injunction  will  issue  in  such  a  case  although  no  actual  de- 
ceit or  fraudulent  intent  is  shown. ^^  ''A  man  is  not  always  de- 
barred from  giving  his  own  name  to  a  corporation,  where  it 
happens  to  be  the  name  of  a  competitor,  if  he  does  it  for  some  good 
reason  and  in  such  a  way  as  not  to  mislead  the  public.  His  name 
may  be  of  value  to  him  because  it  suggests  his  skill,  or  his  financial 
abihty,  or  something  else  that  belongs  to  him."  ^^ 

The  United  States  Supreme  Court  sustains  the  rule  that  ''one 
corporation  is  not  entitled  to  restrain  another  from  using  in  its 
corporate  title  a  name  to  which  others  have  'a  common  right;' "  ^^ 
and  adds  that  this  rule  is  applicable  to  all  names  publici  juris. 
The  decision  then  refers  to  the  necessity  or  nonnecessity  of  us- 
ing one's  personal  name  in  choosing  a  business  name,  as  follows: 
*'It  is  said  that  the  use  of  the  word  'Remington'  in  the  name 
'  Remington-Sholes '  was  unnecessary,  as  if  necessity  were  the 
absolute  test  of  the  right  to  use.  But  a  person  is  not  obliged  to 
abandon  the  use  of  his  name  or  to  unreasonably  restrict  it.  The 
question  is  whether  his  use  is  reasonable  and  honest,  or  is  cal- 

"  Dunlop   Pneumatic    Tyre   Co.   v.  ^^  Howe  Scale  Co.  v.  Wyckoff,  Sea- 

Dunlop  Motor  Co.,  Ltd.,  22  R.  P.  C.  mans   &   Benedict,    198   U.    S.    118- 

533-1905  (Ct.  Sess.  Scotland).  137-8-40-1905,    49    L.    ed.    972;    25 

"  International  Silver  Co.  v.  W.  H.  Sup.   Ct.   609,   citing  Columbia  Mill 

Rogers  Corp.,  66  N.  J.  Eq.   119-36-  Co.   v.  Alcorn,   150  U.  S.  460-1893; 

1904;  57  Atl.  1037.  37  L.  ed.  1144;  14  Sup.  Ct.  141. 


> 


174  Corporate  Names 

culated  to  deceive.*'  And  it  was  held  in  this  case  that  the  defend- 
ants' acts  were  not  calculated  to  deceive  and  it  had  taken  all 
reasonable  precautions  to  prevent  confusion.  This  being  so  no 
further  duty  to  differentiate  rested  upon  defendants.  The  position 
of  the  court  is  summed  up  as  follows:  "It  was  natural  that  those 
who  had  invented  the  machine,  and  given  all  their  time  and  means 
in  introducing  it  to  the  public,  when  they  came  to  organize  the 
corporation  which  was  to  represent  the  culmination  of  their 
hopes  and  efforts,  should  choose  their  own  name  as  the  corporate 
name.  In  doing  so  I  think  they  were  exercising  only  the  common 
privilege  that  every  man  has  to  use  his  own  name  in  his  own  busi- 
ness, provided  it  is  not  chosen  as  a  cover  for  unfair  competition. 
They  did  not  choose  the  complainant's  name  literally,  or  so 
closely  that  those  using  ordinary  discrimination  would  confuse  the 
identity  of  the  two  names,  and  that  differentiation  is  sufficient  to 
relieve  them  of  any  imputation  of  fraud.  *  *  *  We  hold 
that,  in  the  absence  of  contract,  fraud  or  estoppel,  any  man  may 
use  his  own  name,  in  all  legitimate  ways,  and  as  the  whole  or  a 
part  of  a  corporate  name." 

All  this  is  unquestionably  law,  in  the  absence  of  unfair  com- 
petition. What  then  is  unfair  competition?  The  court  here 
defines  it  thus:  "The  essence  of  the  wrong  in  unfair  competition 
consists  in  the  sale  of  the  goods  of  one  manufacturer  or  vendor  for 
those  of  another,  and  if  defendant  so  conducts  its  business  as  not 
to  palm  off  its  goods  as  those  of  complainant,  the  action  fails"  -^ 

29  Howe  Scale  Co.  v.  Wyckoff,  Sea-  diet,  the  complainant.  Among  the 
mans  &  Benedict,  198  U.  S.  118-  trade-marks  registered  by  that  corpo- 
1905;  49  L.  ed.  972;  25  Sup.  Ct.  609.  ration  was  the  name  "Remington." 
E.  Remington  &  Sons,  first  a  firm,  The  Howe  Scales  Company,  the  de- 
aftcrward  incorporated,  manufactured  fendant,  was  the  sales  agent  of  the 
the  "Remington  Rifle,"  and  the  " Remington-Sholes  Company,"  which 
"Remington  Sewing  Machine."  In  manufactured  at  Chicago  a  machine 
1873,  it  began  to  manufacture  a  type-  called  the  "Remington-Sholes"  or 
writing  machine,  the  most  important  "Rem-Sho"  typewriter.  This  com- 
feature  of  which  was  invented  by  one  pany  was  the  successor  to  a  company 
Sholes.  From  1880,  this  machine  was  organized  in  1892  by  one  Sholes,  the 
called  the  "Remington"  and  "Rem-  son  of  the  inventor  above  mentioned, 
ington  Standard."  In  1886,  the  type-  in  which  Franklin  Remington,  son  of  a 
writing  branch  of  the  business,  with  former  president  of  E.  Remington  & 
the  right  to  use  the  name  "Standard  Sons,  acquired  an  important  interest, 
Remington  Typewriter,"  was  trans-  and  to  the  position  of  which  he  con- 
ferred to  Wyckoff,  Seamans  &  Bene-  tributed  much  time  and  money.   Aside 


Family  Names  as  Names  of  Corporations 


175 


(id.  p.  140).  The  rule  in  this  regard  is  clearly  set  out  in 
Higgins  v.  Higgins,  the  leading  case  in  New  York  on  the 
subject.^" 

The  sum  of  the  whole  matter  is  this:  If  a  plaintiff  can  demon- 
strate that  the  defendant's  use  of  its  corporate  name  is  causing 
unfair  competition  as  against  the  plaintiff,  the  defendant  must 
change  its  name  even  though  it  contain  the  personal  name  of  an 
incorporator,  and  inasmuch  as  an  affirmative  duty  to  differentiate 
itself  from  the  plaintiff  rests  upon  defendant,  the  failure  so  to  do 
is  an  evidence  of  fraud. 

The  fact  that  some  person  transfers  to  the  incorporators  full 
right  to  use  his  personal  name  as  part  of  the  corporate  name  will 
not  excuse  the  adoption  of  a  name  which  is  similar  to  one  already 
in  use.    In  the  first  place  no  person  has  a  right  to  transfer  the 


from  the  use  of  the  name  Remington, 
nothing  was  done  by  the  last-named 
company  or  the  defendant  to  promote 
confusion  in  the  mind  of  the  public, 
and  that  company  advertised  expressly 
that  its  machine  was  not  the  "  Reming- 
ton Standard  Tj^pewriter."  Held, 
that  the  name  Remington  was  prop- 
erly used  by  the  Remington-Sholes 
Company,  and  that  the  right  to  use 
one's  name  in  an  honest  manner  in- 
cludes the  right  to  use  it  as  a  part  of  a 
corporate  name. 

R.  W.  Rogers  Co.  v.  Wm.  Rogers 
Mfg.  Co.,  70  Fed.  1017-1895  (C.  C. 
A.  2d  Cir.).  The  various  Rogers 
cases  in  the  federal  courts  are  found 
in  66  Fed.  56;  70  Fed.  1017;  110 
Fed.  955;  113  Fed.  526;  118  Fed.  133, 
and  are  suits  brought  to  overthrow  a 
succession  of  attempts  to  obtain  by 
unfair  means  the  business  of  one 
Rogers,  by  various  other  persons 
named  Rogers,  and  by  corporations 
formed  by  persons  bearing  the  name 
Rogers.  Wallace,  Circuit  Judge,  said 
(70  Fed.  1019):  "I  place  my  con- 
currence in  the  judgment  in  this  cause 
upon  the  broad  ground  that  a  body  of 
associates  who  organize  a  corporation 


for  manufacturing  and  selling  a  par- 
ticular product  are  not  lawfully  en- 
titled to  employ  as  their  corporate 
name  in  that  business  the  name  of  one 
of  their  number  when  it  appears  that 
such  name  has  been  intentionally 
selected  in  order  to  compete  with  an 
estabhshed  concern  of  the  same  name, 
engaged  in  similar  business,  and  divert 
the  latter's  trade  to  themselves  by 
confusing  the  identity  of  the  products 
of  both,  and  leading  purchasers  to  buy 
those  of  one  for  those  of  the  other. 
No  person  is  permitted  to  use  his  own 
in  such  manner  as  to  inflict  an  unneces- 
sary injury  upon  another.  The  cor- 
porators chose  the  name  unneces- 
sarily, and,  having  done  so  for  the 
purpose  of  unfair  competition,  can- 
not be  permitted  to  use  it  to  the  in- 
jury of  the  complainant"  (at  p.  1019). 
The  Supreme  Court  says  of  these 
words  of  Judge  Wallace  in  Howe  Scale 
Co.  V.  Wyckoff,  Seamans  &  Benedict, 
198  U.  S.  118-1905;  49  L.  ed.  972;  25 
Sup.  Ct.  609:  "This,  of  course,  as- 
sumes not  only  that  the  name  selected 
was  calculated  to  deceive,  but  that  the 
selection  was  made  for  that  purpose." 
3°  144  N.  Y.  462. 


176 


Corporate  Names 


rights  to  his  name  for  use  for  such  a  purpose;  ^'  and  secondly  the 
incorporators  had  no  right  to  adopt  such  a  name.^-    "A  corpora- 


"  Burrow  v.  Marceau,  124  App. 
Div.  (N.  Y.)  665-1908.  Otto  Sarony, 
as  executor  of  Napoleon  Sarony,  who 
at  the  time  of  his  death  was  conduct- 
ing a  profitable  business  as  a  photog- 
rapher under  the  trade  name  "Sa- 
rony," sold  the  good-will  and  trade 
name  of  the  business  to  plaintiff. 
Subsequently  Otto  Sarony  assumed  to 
permit  the  defendant,  who  was  al- 
ready a  photographer,  to  organize  a 
corporation  to  conduct  a  similar  busi- 
ness under  the  name  "Otto  Sarony 
Company;"  this  company's  place  of 
business  was  close  to  plaintiff's.  Ac- 
tual deception  of  the  public  was  al- 
leged. Held,  on  demurrer,  that  a  cause 
of  action  for  an  injunction  was  stated. 

32  Dodge  Stationery  Co.  v.  Dodge, 
145  Cal.  380-1904 ;  78  Pac.  879.  Plain- 
tiff was  incorporated  in  August,  1894. 
J.  S.  Dodge  was  an  incorporator,  until 
1890,  when  he  sold  all  his  interest  in 
the  company.  The  business  was 
generally  known  as  "Dodge's,"  its  sign 
containing  only  the  word  "Dodge's." 
In  January,  1901,  J.  S.  Dodge  and 
others  incorporated  the  "J.  S.  Dodge 
Company,"  took  a  store  in  the  same 
block  with  plaintiff's  store,  100  feet 
away,  and  put  up  a  sign  "Dodge  will 
occupy  this  store,"  etc.  Defendant 
also  used  word  "Dodge"  alone  on  sign 
and  stamped  envelopes  "Dodge's,  209 
Post  Street,  S.  F."  There  had  not 
been  since  September  17,  1900,  any- 
one with  the  name  of  Dodge  connected 
with  plaintiff.  J.  S.  Dodge  had  been 
in  this  business  in  San  Francisco 
twenty-five  years,  and  during  that 
time  had  used  name  "Dodge."  Held, 
that  by  sale  of  stock,  Dodge  did  not 
sell  any  part  of  plaintiff's  good-will. 
By  seUing  his  stock,  he  did  not  agree 


not  to  enter  stationery  business. 
Dodge  had  the  right  to  enter  business 
in  his  own  name,  so  long  as  he  did  not 
try  to  pass  his  store  off  as  plaintiff's 
store.  "It  does  not  follow,  however, 
that  he  could  confer  the  right  to  use 
his  name  upon  a  corporation  for  the 
purpose  of  enabling  that  corporation 
to  engage  in  a  business  which  had 
been  conducted  by  another  corpora- 
tion under  a  similar  name,  and  it  is 
well  settled  he  could  not  do  so.  This 
must  be  especially  true  where  he  him- 
self caused  the  use  of  his  name  by  the 
prior  corporation.  The  name  given 
to  a  corporation  is  an  artificial  and 
impersonal  thing,  selected  arbitrarily 
by  the  corporators  themselves,  and 
can  be  selected  from  an  entire  vocab- 
ulary of  names"  (p.  388),  citing  De 
Long  V.  De  Long  Hook  &  Eye  Co.,  89 
Hun,  399-1895;  35  N.  Y.  Supp.  509. 
The  defendant's  rights  are  distinct 
from  those  of  J.  S.  Dodge,  and  are  the 
same  as  if  he  had  never  been  con- 
nected with  it  at  all.  "Whoever  its 
incorporators  might  be,  they  had  no 
right  to  fraudulently  adopt  a  name 
similar  to  plaintiff's  name  for  the 
purpose  of  palming  off  the  business  to 
be  conducted  by  the  new  corporation 
as  plaintiff's  business,  and  thus  invade 
the  rights  of  the  prior  corporation. 
Injunction  will  lie  to  restrain  the 
simulation  so  far  as  may  be  necessary 
to  protect  the  rights  of  the  prior 
corporation,  even  to  the  extent  of 
prohibiting  the  use  of  the  name  at 
all,  the  courts  interfering  in  such  cases 
solely  for  the  purpose  of  preventing 
fraud,  actual  or  constructive"  (id. 
p.  389).  The  court  has  power  to  re- 
strain a  company  from  using  such  a 
name  as  "Dodge's." 


What  Is  Evidence  of  Fraud  in  Use  of  a  Name     177 

tion  has  not  the  right  to  use  the  name  of  one  of  its  incorporators 
for  the  purpose  of  unfair  competition  with  an  older  dealer,  where 
it  is  likely  to  do  him  injury,  and  it  will  not  be  permitted  to  use  that 
name  if  it  is  the  name  by  which  the  older  article  is  usually  called 
for  and  described."  ^^  In  Massam  v.  Thorley's  Cattle  Food  Co.,  ^^ 
a  much  cited  case,  Joseph  Thorley  had  made  cattle  food  called 
''Thorley's  Food  for  Cattle."  At  the  time  of  this  action  the 
name  meant  that  it  was  made  at  TJiorley's  works.  It  did  not 
mean  food  made  by  a  particular  recipe  belonging  to  Thorley. 
The  defendant  got  hold  of  J.  W.  Thorley,  a  brother  of  the  first 
Thorley,  and  formed  ''J.  W.  Thorley  and  Company,  Limited," 
and  sold  ''Thorley's  Food  for  Cattle."  J.  W.  Thorley  had  a  one 
shilUng  share  in  the  company  and  was  employed  as  an  agent.  It 
was  held  that  the  defendant  intended  deceit.  See  also  Repetti  v. 
Repetti  ^^^  where  the  plaintiff  was  a  corporation  using  the  single 
name  ''Repetti"  and  the  defendants  were  a  corporation  using 
the  name  ''Louis  Repetti,  Inc.,"  and  a  son  of  the  founder  of  the 
plaintiff  corporation.  See  also  Henry  Romeike  v.  Albert  Romeike 
&  Co.,  Inc.,^^^  in  which  similar  facts  were  found. 

§  91.  What  is  Evidence  of  Fraud  in  use  of  a  Corporate  Name. 
—  In  the  face  of  facts  showing  that  in  choosing  a  corporate  name 
the  incorporators  intended  to  profit  fraudulently  by  the  reputation , 
of  someone  else,  they  will  not  be  heard  to  deny  that  they  intended 
to  do  so,  or  that  they  did  not  know  of  the  existence  of  their  com- 
petitor, or  that  it  was  an  accident  that  the  names  are  similar.  ^^ 
Despite  all  pleas  of  this  sort  it  is  the  duty  of  the  court  to  restrain 
such  use.^^    Lord  Halsbury,  C.  J.,  in  The  North  Cheshire  &  Man- 

^^  J.  &  P.  Coats,  Ltd.,  Y.John  Coates  of   whom  was   T.   H.   Garrett,   who 

Thread  Co.,  135  Fed.  177-79-1905.  owned  two  and  one-half  shares.    The 

3<  14  Ch.  Div.  748-1880.  cans,  packages,  labels  and  wrappers 

^^^  Repetti  v.  Louis  Repetti,  Inc.,  N.  of  defendant  differed  from  plaintiff's 

Y.  Law  J.,  Jan.  5,  1916.  but  little,  except  that  "T.  H.  Garrett, 

s^**  Henry  Romeike  v.  Albert  Romeike  Louisville,  Ky.,"  was  substituted  for 

cfe Co., /nc.,N.Y.LawJ.,Jan. 23, 1917.  "W.  E.  Garrett,  Philadelphia."    The 

35  Above  statement  approved.    Elhs  color  was  the  same,  type  similar  in 

V.  Rochester  Egg  Carrier  Co.,  134  N.  Y.  appearance,  arrangement,  and  effect. 

Supp.  p.  983  (1912).  Defendants   denied   intent   to    copy. 

38  T7.  E.  Garrett  &  Sons  v.  T.  H.  Held,  that  failure  of  defendants   to 

Garrett  &  Co.,  78  Fed.  472-1896;  24  adopt  some  name  other  than  Garrett 

C.  C.  A.  172.    Plaintiffs  made  "Gar-  (which  they  claimed  to  have  adopted 

rett's   Snuff."     Defendants   were  in-  because  T.  H.  Garrett  originated  the 

corporated  in  1895  by  four  men,  one  idea  of  the  company)  was  evidence  of 


178 


Corporate  Names 


Chester  Brewery  Co.,  Ltd.,  v.  The  Manchester  Brewery  Co.,  Ltd.,^'' 
said  that  on  the  question  as  to  whether  the  two  names  were  so 
similar  as  to  be  calculated  to  deceive,  no  witness  would  be  en- 
titled to  say,  for  the  reason  that  this  was  the  very  question 
which  the  court  was  called  upon  to  decide;  that  from  the  mere 
similarity  of  the  two  names  and  the  fact  that  two  breweries 
existed,  one  the  Manchester  Brewery  and  the  other  the  North 
Cheshire  Brewery,  unfair  competition  was  inevitable;  and  that 
the  fact  that  there  was  undoubtedly  no  intent  to  defraud  was 
quite  immaterial,  for  the  court  must  restrain  anything  that  is 
injuring  another  person,  however  inadvertently  or  innocently  it 
may  be  done.  These  rules  have  been  applied  by  the  House  of 
Lords  to  a  consolidation  of  two  corporations  and  a  use  of  a  com- 
bination of  the  two  names  as  a  name  for  the  new  company,  hold- 
ing that,  if  the  new  name  was  so  similar  to  one  already  in  existence 
as  to  cause  deceit  and  to  mislead,  it  should  be  enjoined.  Says 
Lord  Halsbury:  "The  result  to  my  mind  is  that  everybody  who 
had  dealt  with  the  old  company,  seeing  this  amalgamated  name, 
would  send  their  order  to  the  new  address  and  not  to  the  old 


its  intent  to  fraudulently  profit  by  the 
reputation  of  W.  E.  Garrett.  "It  is 
not  to  be  credited  that  the  imitations 
were  unintentional  or  accidental"  (id. 
p.  476),  but  were  made  with  intent 
that  retail  dealers  should  sell  it  as 
"Garrett's  Snuff,"  and  as  defend- 
ant's product  was  inferior  to  W.  E. 
Garrett's  snuff,  they  would  get  his 
prices,  thereby  reaping  large  profits. 
See  §  30. 

"[1899]  App.  Cas.  83.  The  re- 
spondents, "The  Manchester  Brew- 
ery Co.  Ltd,"  had  carried  on  busi- 
ness under  that  name  for  years  in 
Manchester  and  elsewhere.  The  ap- 
pellants bought  an  old  business,  con- 
ducted under  the  corporate  name  of 
"The  North  Cheshire  Brewery  Co., 
Ltd.,"  the  brewery  being  at  Maccles- 
field, but  some  business  being  done  at 
Manchester.  Appellants  then  had 
themselves  incorporated  and  regis- 
tered   as    "The    North    Cheshire    & 


Manchester  Brewery  Co.  Ltd."  This 
was  done,  as  the  court  found,  with- 
out any  intent  to  deceive  the  public 
or  divert  respondent's  trade.  Held, 
that  as  a  matter  of  fact,  the  name  of 
the  appellant  company  was  calculated 
to  deceive,  and  that  its  use  should  be 
enjoined.  "When  I  see  that  in  the 
name  of  the  appellant  company  there 
is  literally  and  positively  the  same 
name  as  that  of  the  rival  company, 
as  I  will  call  it,  and  that  it  is  only 
prevented  from  being  identical  in 
name  by  having  another  name  asso- 
ciated with  it,  I  should  think  myself, 
that  the  inevitable  result  would  be 
that  which  appears  to  have  hap- 
pened, —  that  anyone  who  saw  the 
two  names  together  would  arrive  at 
the  conclusion  without  any  doubt  at 
all  that  the  two  companies,  both  with 
well-known  names,  both  in  the  par- 
ticular neighborhood  with  which  we 
are  dealing,  had  been  amalgamated." 


What  Is  Evidence  of  Fraud  in  Use  of  a  Name     170 

address  where  the  single  company  had  carried  on  its  business. 
That  would  be  an  ordinary  business  matter.  If  they  first  came 
to  the  conclusion  that  it  was  an  amalgamation  of  the  two  concerns, 
their  next  proceeding  would  be,  unless  they  had  certain  knowl- 
edge of  the  matter  (and  of  course  when  you  are  deaUng  with  the 
question  of  people  being  deceived,  that  negatives  the  idea  of  their 
having  certain  knowledge,  or  else  they  could  not  be  deceived), 
those  customers  as  a  matter  of  business  would  direct  their  orders, 
if  they  intended  to  remain  customers  of  the  old  firm,  to  the 
address  of  the  new  company  which  had  just  been  brought  out, 
which  they  would  think  included  the  old.  Can  that  be  permitted? 
I  think  it  cannot.  That  is  calculated  to  deceive,  and  that  is  the 
very  question  which  your  lordships  have  to  determine"  (id.  pp.  85- 
86). 

The  combination  of  various  acts  such  as  the  use  of  a  similar 
corporate  name,  similarity  in  the  business  done,  and  the  nearness 
of  the  stand  adopted  by  the  defendant  to  that  of  the  plaintiff  will 
justify  a  finding  of  fraudulent  conduct  on  defendant's  part.^^ 

It  has  been  said  that  the  very  fact  that  a  body  of  associates 
organizing  a  company  take,  as  part  of  the  name  of  the  company, 
the  name  of  one  of  their  number  which  is  the  same  or  nearly  the 
same  as  that  of  some  rival  who  has  an  established  business,  in 
most  cases  gives  rise  to  a  presumption  of  fraud.  The  presumption 
may  be  rebutted;  but  the  fact  remains  that  despite  the  laudable 
desire  of  a  promoter  or  incorporator  to  make  his  own  name  a  part 
of  the  company,  despite  his  common-law  right  to  use  his  own  name 

38  Viano  v.  Baccigalupo,  183  Mass.  of   'Boston   Trade   Peanut   Roasting 

160-1903;  67  N.  E.  641.    The  plain-  Company,'  a  name  almost  identical 

tiff,  under  the  name  "Boston  Peanut  with  the  plaintiffs'  name  of  'Boston 

Roasting  Co,"  had,  at  time  defendant  Peanut  Roasting  Company,'  together 

entered  business,  been  carrying  on  its  with  the  fact  that  the  business  done 

business  at  94  Fulton  street  for  five  by  the  defendant  is  identically  the 

years.     Defendant  opened  his   shop  same,   and   that   the   defendant   has 

on   Fulton   street   and   adopted   the  selected  a  place  of  business  not  only 

same  identical  name,  except  he  put  in  the  same  city  but  on  the  same  street. 

word    "Trade"    between    "Boston"  That  justifies  a  finding  that  the  action 

and  "Peanut."    Held,  by  Loring,  J.:  of  the  defendant  is  calculated  to  in- 

"The  plaintiffs'   right  to   protection  duce  the  pubhc   to   trade  with   the 

does  not  depend  on  the  defendant's  defendant  under  the  belief  that  it  was 

having  adopted  a  similar  single  word  trading  with  the  plaintiffs.     *    *     * 

alone,  but  on  the  combination  adopted  One  mistake  in  mail  orders  was  proved 

by  the  defendant  of  the  business  name  at  the  hearing." 


180  Corporate  Names 

as  he  will,  the  trader  who  enters  the  court  of  equity  with  greatest 
claim  on  its  aid  is  he  who  has  striven  to  differentiate  his  goods  and 
his  company  as  much  as  possible  from  all  rivals,  and  to  sell  his 
goods  on  their  merits,  and  advertise  himself  and  his  house  in  as 
individual  a  manner  as  possible. 

"The  public  are  entitled  to  protection  from  being  misled  to 
trade  with  parties  not  known  to  them,  under  the  impression  that 
they  are  doing  business  with  an  established  firm  or  person  with 
whom  they  have  been  accustomed  to  deal."  ^^ 

§  92.  Rights  Arising  out  of  Priority  in  Use  of  Corporate  Names. 
—  Names  of  corporations  which  do  not  include  personal  names 
must,  of  course,  be  names  to  which  the  incorporators  of  neither 
the  plaintiff  company  or  the  defendant  company  have  any  such 
individual  right  as  they  have  in  their  own  family  name,  hence, 
as  between  two  corporate  names,  not  personal  in  character, 
which  are  alike  or  similar,  the  one  coming  into  existence  last 
must  give  way  to  the  prior  one  for  two  reasons:  (1)  Because  the 
existence  of  both  will,  in  all  likeHhood,  cause  confusion;  (2)  be- 
cause of  the  right  of  priority  in  the  one  first  used.  It  is  not  neces- 
sary that  any  long  period  of  time  should  intervene  between  the 
time  the  first  corporation  enters  business  and  the  time  the  second 
begins.     Thirteen  months  has  been  held  sufficient.^" 

^^  Imperial   Mfg.   Co.   v.   Schwartz,  company    should    be    enjoined    from 

105   III.   App.   525-1903;   La  Sociele  using  its  corporate  name. 
Anonyme  des  Anciens  Etablissements,  The  Accident  Ins.  Co.,  Ltd.,  v.  The 

Panhard  et  Levassor  v.  Panhard-Le-  Accident,  Disease,  &  General  Ins.  Corp., 

vassor  Motor  Co.,  18  R.  P.  C.  405-1901.  Ltd.,  51  L.  T.  N.  S.  597-1884,  before 

Seven  men,  none  of  whom  bore  name  Pearson  J.,  in  chancery.  Plaintiff  regis- 

Panhard  or  Levassor,  formed  defend-  tered  its  name  in  1870,  but  had  existed 

ant  company  in  England  and  regis-  since  1849.     Defendant  registered  its 

tered  its  name.    Plaintiff  did  not  do  name  in  1883,  and  plaintiff  became 

business  directly  in  England.     Held,  aware  of  the  fact  in  1884.     Plaintiff 

defendants  should  be  enjoined  from  was  known  as  "The  Accident  Co.," 

using  either  of  the  names.  or  "The  Accident."    Held,  defendant 

*° S.  Howes  Co.  V.  Howes  Grain-  "takes  a  title  which  is  so  like  the 
Cleaner  Co.,  46  N.  Y.  Supp.  165-  plaintiff's  title,  that  I  am  satisfied  by 
1897.  The  "S.  Howes  Company"  the  evidence  before  me  that  it  is  calcu- 
was  organized  in  January,  1895;  the  lated  to  deceive,  and  that  it  is  also  cal- 
" Howes  Grain-Cleaner  Company"  in  culated  to  appropriate  to  the  def end- 
February,  1896,  the  latter  being  ant  company  business  which  would 
named  for  its  president.  Both  com-  legitimately  go  to  the  plaintiff  com- 
panies manufactured  the  same  class  pany"  (id.  p.  598). 
of  machinery.     Held,  that  the  latter 


Use  of  Term  "Works,"  ''Company,"  etc. 


181 


In  one  instance,  persons  who  began  doing  business  under  the 
name  ''American  Watchman's  Clock  Company,"  as  partners, 
in  summer  of  1901,  were  held  to  be  able  to  restrain  others 
from  organizing  a  corporation  in  May,  1902,  under  the  same 
name.*^^ 

§  93.  Use  of  Term  "  Works,"  "  Company,"  etc.,  by  an  Indi- 
vidual or  Partnership.  —  The  fact  that  the  user  of  the  name,  in 
the  first  instance,  is  an  individual  or  partnership  engaged  in  a 
business  under  some  fanciful  or  symbolic  name  such  as  "New 
York  Specialty  Works,"  or  "Imperial  Manufacturing  Com- 
pany," and  not  a  corporation,  does  not  tend  to  defeat  the  right 
of  this  first  user  to  enjoin  one  subsequently  adopting  the  name, 
or  one  very  similar,  as  the  name  of  a  corporation.^-     Such  a 


^1  Pettes  V.  American  Watcfunan's 
Clock  Co.,  89  App.  Div.  (N.  Y.)  345- 
1903;  85  N.  Y.  Supp.  900.  Plain- 
tiffs were  copartners,  and  part  of 
their  business  was  the  sale  and  in- 
stallation of  electric  time  detectors 
or  watchman's  clocks.  This  branch 
of  their  business  they  conducted  un- 
der the  name  of  the  "American  Watch- 
man's Clock  Company,"  having  in  the 
summer  of  1901  filed  a  certificate  of 
intention  to  do  business  under  that 
name.  In  May,  1902,  they  executed 
the  papers  necessary  to  incorporate  in 
this  state  under  that  name,  but  in  the 
same  month  defendant  was  incor- 
porated in  this  state  under  the  same 
name  for  the  purpose  of  engaging  in 
the  same  business.  The  incorporators 
of  the  defendant  company  knew  that 
plaintiffs  were  engaged  in  business  as 
above  mentioned  under  the  name 
adopted  by  them.  Held,  that  defend- 
ant should  be  restrained  from  the  use 
of  its  corporate  name  in  the  same 
business  as  plaintiffs. 

"  Imperial  Mfg.  Co.  v.  Schwartz, 
105  111.  App.  525-1903;  Mesne  v. 
Sundet,  93  Minn.  299-1904;  101  N.  W. 
490.  In  1901,  plaintiffs  entered  into  a 
partnership  at  Crookston,  under  the 


name  of  Crookston  Marble  &  Granite 
Works.  Two  weeks  later,  they 
changed  their  name  to  the  Crookston 
Marble  Works,  and  since  that  time  had 
done  business  under  that  name.  For 
nine  years  prior  thereto,  some  of  the 
defendants  had  done  a  like  business  at 
Crookston  as  partners  under  the  name 
of  the  North  Western  Marble  Works. 
They  used  the  words  " Marble  Works" 
as  a  sign  over  the  place  of  business, 
and  during  part  of  this  time  about  10 
per  cent,  of  the  letters  received  by 
them  were  addressed  "Crookston 
Marble  Works."  In  1902,  defendants 
incorporated  under  the  name  "Crook- 
ston Marble  Works."  Plaintiffs  adopt- 
ed their  name  one  year  before  defend- 
ants organized  as  a  corporation.  The 
trial  court  found  no  intent  to  compete 
unfairly  on  the  part  of  either  of  the 
parties.  "The  rule  is  settled  that,  in 
the  absence  of  statutory  provisions 
regulating  the  subject,  parties  or- 
ganizing a  corporation  must  choose  a 
name  at  their  peril,  and  that  the  use  of 
a  name  similar  to  one  adopted  by 
another  corporation,  may  be  enjoined 
at  the  instance  of  the  latter,  if  mis- 
leading and  calculated  to  injure  its 
business.      Newby    v.    Oregon    Cent. 


182  Corporate  Names 

simulation  of  a  name  will  be  enjoined  although  the  plaintifif  has 
used  the  name  in  such  a  manner  as  would  cause  it  to  import 
that  his  concern  was  a  corporation  when,  in  fact,  he  never  had 
incorporated  his  business  at  all.  The  fact  that  the  name  which 
the  defendant  attempts  to  use  has  been  previously  appropriated  as 
the  name  for  any  sort  of  business  concern,  by  another,  is  sufficient 
ground  to  warrant  an  injunction.  This  is  not  universally  held, 
however,  for  some  jurisdictions  regard  words  like  ''Works," 
"Company,"  "Association,"  as  importing  that  the  concern  using 
them  is  a  corporation,  and  that  a  partnership  or  individual  can 
have  no  property  in  a  name  containing  such  words. ^^ 

§  94.  Outgoing  Stockholders  and  Employees.  —  It  is  entirely 
natural  that  one  who  has  acquired  skill  and  experience  in  his 
trade  or  business,  while  in  the  employ  of  another,  should  wish 
to  start  out  for  himseK.  It  is  entirely  right  that  he  should  use 
his  own  name  for  the  new  concern;  but  he  cannot  do  so  in  such  a 
manner  that  from  his  so  doing,  confusion,  fraud,  or  loss  of  business 
to  the  old  company  may  result.  The  same  is  true  also  of  stock- 
holders of  a  corporation,  who  leave  it  to  form  a  new  company. 
Such  outgoing  stockholders  must  use  their  own  name  subject 
to  the  rights  of  the  company  with  whom  they  formerly  were 
connected.'*^    In  this  connection  see  the  chapter  on  "Good-will." 

Ry.  Co.,  1  Deady,  609-1869;  Fed.  Cas.  not  being  the  names  of  persons,  but  of 

No.  10,144;  Holmes,  Booth  &  Hmjdens  an  entity  capable  of  business." 

V.  Holmes,  Booth  &  Ativood  Mfg.  Co.,  Hazelton  Boiler  Co.  v.  Hazelton  Tripod 

37  Conn.  278-1870;  C.  S.  Higgins  Co.  Boiler  Co.,  142  111.  494-1892;  30  N.  E. 

V.  Higgins'  Soap  Co.,  144  N.  Y.  462-  339,    the    plaintiff,    a    copartnership, 

1895;  39  N.  E,  490;  27  L.  R.  A.  42;  held  to  have  no  property  in  a  name,  as 

Celluloid  Mfg.  Co.  v.  Cellonite  Mfg.  a    trade    name,    which    imported    a 

Co.,  32  Fed.  94-1887  (C.C.N.  Y.);i2.  corporation.     Words    like    "Associa- 

W.  Rogers  Co.  v.   Wm.  Rogers  Mfg.  tion,"    "Works,"    "Company,"    pre- 

Co.,   70   Fed.    1017-1895;    17   C.   C.  ceded  by  words  indicating  the  kind  of 

A.   576;    Plant   Seed   Co.    v.    Michel  business,  are  used  as  names  of  corpora- 

Plant  &  Seed  Co.,  37  Mo.  App.  313-  tions.      Link    v.    Architectural    Iron 

1889.  Works,    24    111.    551-1860;    Perkins 

•"  Clark  V.   Aetna  Iron   Works,  44  Electric  Lamp   Co.   v.   Hood,   44   111. 

111.  App.   510-1892.     Clark  sued  to  App.  449-1892;  The  State  v.  McGrath, 

prevent   defendant   using   the   words  75  Mo.  424-1882. 

"Aetna  Iron  Works,"  on  ground  that  **  Holmes,    Booth    &    Hoydens    v. 

it  had  acquired  the  right  to  use  them  Holmes,  Booth   &   Atwood  Mfg.   Co., 

as  a  trade  name,  before  defendant's  37    Conn.    278-1870.      Plaintifif    in- 

company    was    incorporated.      Held,  corporated     1853,     defendant    incor- 

that  the  "words  import  a  corporation:  porated     1869.      Held,    that    "until 


Outgoing  Stockholders  and  Employees  183 

A  stockholder  in  a  corporation  which  bears  his  family  sur- 
name, does  not  necessarily  lose  all  right  to  use  that  name  as  a 
business  name  in  a  company  making  or  selling  the  same  com- 
modity as  the  corporation,  because  the  latter  sells  its  business, 
including  good-will  and  name.  He  will  be  enjoined,  however, 
from  passing  off  the  goods  made  by  the  new  company  as  those 
of  the  older  corporation  or  its  successor.  ^^  Where  the  name  has 
as  its  principal  feature  the  name  of  a  person,  that  name  is  likely 
to  be  the  nickname  of  the  company,  and  for  a  person  bearing 
that  name  to  start  a  competing  company  with  that  particular 
name  as  the  basis  of  its  name  will  in  all  likehhood  lead  to  decep- 
tion. In  the  words  of  the  Michigan  court  ''the  natural  tendency 
of  the  situation  would  be  to  divert  the  complainant's  business."  ^^ 
Outgoing  stockholders  of  a  corporation  bearing  a  name  the  most 
distinctive  part  of  which  is  the  names  of  such  stockholders,  have 
no  right  to  compete  with  that  corporation,  under  a  new  corporate 
name  so  similar  to  the  first  as  to  mislead.  In  ordinary  speech, 
the  "Alton,"  the  ''Burlington,"  the  "Rock  Island,"  the  "Cen- 
tral," are  used  instead  of  the  full  names  of  these  companies.  In  a 
similar  fashion  the  striking  word  in  other  corporate  names  is 
some  family  name  and  this  surname  alone  is  often  used  as  the 
name  of  the  company.  A  person  whose  name  is  thus  used  as 
the  abbreviated  name  of  a  corporation  will  be  enjoined  from 
allowing  his  name  to  be  assumed  by  another  company  in  such 
fashion  as  to  make  it  possible  that  this  second  company  may  be- 
come known  by  the  same  abbreviation.  Lamb  invented  a  process 
of  knitting.  The  product  was  called  "Lamb  Knit."  He  left  his 
former  employee  and  started  the  Lamb  Glove  and  Mitten  Co. 
Dealers  were  misled  and  an  injunction  was  issued. ^^    Van  Auken 

its  (plaintiff's)  dissolution,  therefore,  841.       Defendant     Lamb     organized 

Holmes  and  Booth  must  use  their  own  Lamb  Knitting  Company,  which  was 

names  subject  to  the  rights  of  the  bought  out  by  plaintiff.     Lamb  was 

petitioners,    unless    relieved    of    that  plaintiff's  superintendent  for  a  long 

inconvenience  by  their  consent."  period,  but  left  their  employ  April, 

*^  Donnell    v.    Herring-Hall-Marvin  1892.     He  then  organized  defendant 

Safe  Co.,  208  U.  S.  267-1908.  company  and  began  to  make  goods 

*"  Penberthy  Injector  Co.  v.  Lee,  120  with  the  same  stitch  used  by  plaintiff, 

Mich.  174-1899;  78  N.  W.  1074.  which  claimed  all  rights  to  said  stitch 

"  Lainb  Knit  Goods   Co.   v.    Lamb  and  trade-mark,  "Lamb  Knit."    De- 

Glove  &  Mitten  Co.,  120  Mich.  159-  fendant  alleged  "Lamb  stitch"  had 

1899;  78  N.  W.   1072;  44  L.  R.  A.  been  in  use  for  twenty-five  years  by 


184 


Corporate  Names 


left  the  ''Van  Auken  Co."  and  formed  the  "Van  Auken  Steam 
Specialty  Co.,"  and  was  enjoined.''^  Penberthy  left  the  Penberthy 
Injector  Co.  and  formed  a  partnership  which  was  called  the  "  Lee- 
Penberthy  Manufacturing  Co.,"  and  he  was  enjoined.  Said  the 
court:  "I  cannot  doubt  that  defendants  intended  to  appropriate  a 
portion  of  complainant's  good-will  and  good  reputation.  I  cannot 
doubt  that  the  natural  tendency  of  the  situation  would  be  to 
divert  the  complainant's  business  to  the  defendants.  I  do  not 
question  or  doubt  the  general  natural  right  which  a  man  has  to  use 
his  own  name  in  his  own  business  without  interference;  but  I 
think,  in  a  case  Hke  the  present  one,  such  right  should  be  guarded 
by  language  sufficiently  clear  and  explicit  to  notify  all  persons  that 
the  business  is  not  that  of  another.  I  do  not  think  this  has  been 
done  by  these  defendants,  and  I  am  of  the  opinion  that  com- 
plainant has  made  out  a  good  case,  and  is  entitled  to  the  injunction 
prayed  for,  with  costs"  ^^  (p.  179). 

the    "  Lee-Penberthy    Manufacturing 


many  mills,  and  that  there  were 
various  Lamb  knitting  machine  com- 
panies in  operation.  Held,  that  the 
plaintiff  was  not  entitled  to  exclusive 
use  of  term  "Lamb  Knit."  But 
dealers  have  been  here  misled  by  the 
similarity  of  the  names  of  these  cor- 
porations, as  business  of  both  parties 
is  largely  gloves  and  mittens.  De- 
fendant was,  therefore,  restrained 
from  the  use  of  the  name  "Lamb 
Glove  and  Mitten  Company"  or  any 
name  in  which  word  Lamb  appeared 
in  connection  with  other  words  in- 
dicating a  business  similar  to  plain- 
tiffs'. 

*^  Van  Auken  Co.  v.  Van  Auken 
Steam  Specialty  Co.,  57  111.  App.  240- 
1894. 

*^  Penherthij  Injector  Co.  v.  Lee,  120 
Mich.  174-1899;  78  N.  W.  1074. 
Penberthy  invented  an  injector  for 
boilers  and  organized  the  Penberthy 
Injector  Company.  The  Penberthy 
injector  became  known  familiarly  to 
the  trade.  Six  years  later  Penberthy 
sold  out  to  the  corporation  all  his  in- 
terest and  engaged  in  a  partnership, 


Company,"  which  made  improved  in- 
jectors. They  located  on  the  same 
street  as  the  said  corporation.  In- 
junction granted. 

Giacomo  Allegretti  V.  Allegretti  Choc- 
olate Cream  Co.,  177  111.  129-1898;  52 
N.  E.  487.  The  appellee,  a  corporation, 
brought  bill  against  Giacomo  Alle- 
gretti, alleging  it  was  owner  of  the  sole 
rights,  processes,  receipts,  and  methods 
of  manufacturing  certain  chocolate 
creams,  and  of  the  trade-mark  "Alle- 
gretti;" that  Giacomo  Allegretti,  who 
was  a  former  employee  of  the  corpora- 
tion, had  set  up  business  under  the 
name  "Allegretti  &  Company"  and 
claimed  to  be  originator  of  Allegretti 
creams,  and  made  and  sold  similar 
goods.  The  corporation  had  been 
making  these  goods  for  many 
years.  Held,  Allegretti  chocolates 
were  for  years  known  in  Chicago,  as 
goods  of  Allegretti  Bros.,  which  after- 
ward became  appellee  company.  De- 
fendants had  right  to  open  business  as 
"Allegretti  and  Company,"  provided 
they  did  so  without  any  intent,  act, 


False  or  Misleading  Use  of  Corporate  Names     185 

In  Charles  S.  Higgins  Co.  v.  Higgins  Soap  Co.,^  the  plaintiff 
was  an  old  concern  formed  by  Charles  S.  Higgins.  This  concern 
sold  its  business  to  the  plaintiff  corporation,  and  subsequently 
the  son  of  the  original  Higgins  [who,  like  his  father,  bore  the  name 
Charles  S.  Higgins]  organized  the  defendant  corporation,  the 
''Higgins  Soap  Co.,"  in  which  he  and  his  family  were  the  prin- 
cipal stockholders.  The  old  Higgins  business  had  become  widely 
known  as  the  "Higgins  Soap  Co."  and  its  soap  as  "Higgins 
Soap."  Three  hundred  thousand  dollars  had  been  spent  in 
advertising  "Higgins  Soap"  subsequent  to  1879.  In  1892,  the 
defendant  company  put  up  soap  in  a  wrapper  marked  "Higgins 
Soap  Co.,  Original  Laundry  Soap,  Chas.  S.  Higgins,  President." 
Held,  the  Higgins  Soap  Co.  was  not  Chas.  S.  Higgins,  and  he  could 
not  thus  appropriate  the  business  of  a  concern  to  which  he  had  sold 
his  good- will  in  the  name  he  bore.  The  court  enjoined  the  defend- 
ant from  use  of  its  corporate  name.  The  court  said  "the  de- 
fendant derives  no  additional  immunity  from  the  fact  that  the 
name  of  'Higgins'  in  its  corporate  name  was  that  of  one  or 
more  of  its  corporators."  See  also  Oneida  Community  v.  Oneida 
Game  Trap  Co.,^^  and  Henry  Romeike  v.  Albert  Romeike  &  Co. 
Inc.,^^"  where  the  defendant  was  organized  by  former  employees 
of  the  plaintiff. 

§  95.  False  or  Misleading  Use  of  Corporate  Names.  —  It 
is  always  unwise,  but  not  always  unlawful  to  use  a  false  name  for  a 
corporation.  So  long  as  no  one  is  injured  by  the  false  name  and 
no  one  objects  who  has  a  right  to  object,  such  a  name  may  be  used. 
But  so  often  does  it  happen  that  false  names  are  made  use  of  to 
effect  unfair  competition,  that  the  courts  look  with  suspicion  on 
any  name  that  is  false.  By  the  term  "a  false  name"  is  meant  the 
use  of  a  name  which  implies  that  the  company  named  has  certain 
features  which  it  has  not.  If  it  be  named  "Peck  Bros.  Co.,"  when 
there  is  but  one  Peck  in  the  company,  such  a  name  is  false  and 
using  such  a  name  is  a  falsehood.     Persons  resorting  to  such 

or  artifice  to  mislead  dealers  in  the  gretti  and  not  by  Ignazio  Allegretti  or 

market  or  the  public  at  large  as  to  the  the  Allegretti  Chocolate  Cream  Com- 

identity  of  the  firm.     Held,  further,  pany." 

that  public  were  so  deceived.     The         ^°  Chas.  S.  Higgins  Co.  v.  Higgins 

defendants  can  use  name  Allegretti  in  Soap  Co.,   144   N.   Y.   462-1895;  39 

a  manner  indicating  that  their  goods  N.  E.  490;  27  L.  R.  A.  42. 

are  "manufactured  and  sold  by  B.  F.  ^i  igg  A.  D.  N.  Y.  769. 

and  I.  A.  Rubel  and  Giacomo  Alle-         ^^^N.Y.  Law  Journal,  Jan.  23, 1917. 


180 


Corporate  Names 


methods  are  usually  presumed  to  do  so  for  a  purpose,  and,  if 
unfair  competition  results,  they  will  be  restrained  from  so  doing. ^^ 

The  fact  that  a  corporation  has  no  one  among  its  stockholders 
or  incorporators  hving  who  bears  the  famil}^  name  which  is  a  part 
of  the  corporate  name,  is  no  ground  for  questioning  its  right  to  use 
the  name  on  the  ground  that  it  is  a  false  name.  In  Dodge  Sta- 
tionery Co.  V.  Dodge, ''^  Dodge  sold  all  his  stock  in  plaintiff  com- 
pany, but  it  was  held  that  by  so  doing  he  did  not  and  could  not 
sell  any  part  of  plaintiff's  right  to  use  his  name.  Nor  could  he  sell 
to  still  another  corporation  the  right  to  use  his  name. 

§  96.  Names  of  Unincorporated  Societies,  Clubs,  etc.  —  Some- 
times serious  disputes  arise  as  to  the  right  of  some  of  the  mem- 
bers of  an  unincorporated  association  to  incorporate,  using  the 
name  of  the  common  association.  The  rule  in  New  York  seems  to 
be  that  where  two  factions  incorporate,  neither  can  have  the  ex- 
clusive right  to  the  common  name.^^ 

5-  Peck  Bros.  &  Co.  v.  Peck  Bros,      itself  a  falsehood,  and  we  must  believe 


Co.,  113  Fed.  291-1902  (C.  C.  A.  7th 
Cir.);  51  C.  C.  A.  251;  62  L.  R.  A. 
81.  Elnathan  Peck  and  two  sons,  in 
1859,  began  business  as  E.  Peck  & 
Sons,  in  New  Britain,  Connecticut. 
In  1862,  same  business  was  incorpo- 
rated as  "Peck  Bros.  &  Co."  Later 
the  house  became  embarrassed  and 
went  into  a  receiver's  hands  —  who 
sold  it  to  three  stockholders,  one  pf 
whom  was  a  Peck.  While  the  receiver- 
ship was  pending,  a  charter  was  taken 
out  in  lUinois  for  a  corporation  kno\\Ti 
as  "Peck  Bros.  Co.,"  designed  to  en- 
gage in  same  business,  the  old  company 
having  had  a  branch  office  in  Chicago. 
There  was  one  person  in  the  new  com- 
pany named  Peck.  Held,  "Here  the 
artifice  consisted  in  not  using  one's 
own  name  but  in  assuming  falsely  the 
name. 'Peck  Bros.,'  there  being  no 
brothers  of  that  name  in  the  incorpora- 
tion. The  name,  manifestly,  was 
thus  assumed  for  the  purpose  of 
obtaining  the  good-wll  of  the  estab- 
lished business  of  the  Connecticut 
corporation.    The  name  assumed  was 


that  it  was  so  assumed  for  a  pur- 
pose" (p.  297).  "*  *  *  There 
is  here  either  original  wrongful  intent, 
or,  if  the  design  were  originally  honest, 
it  became  wrongful  upon  failure  to  ac- 
quire by  purchase  the  business  and 
trade  name  of  the  plaintiff." 

"  145  Cal.  380-1904;  78  Pac.  879. 

^^  Original  La  Tosca  Social  Club 
V.  La  Tosca  Social  Club,  23  App.  D.  C. 
96-1904.  For  about  si.x  years  there 
was  an  unincorporated  association 
knowm  as  the  "La  Tosca  Social  Club." 
Some  of  the  members  thought  that  the 
club  should  be  incorporated,  and  three, 
out  of  a  total  of  twelve,  caused  it  to 
be  incorporated,  under  name  of  the 
unincorporated  association.  There- 
upon, about  half  of  the  members 
withdrew  and  about  ten  months  later 
incorporated  themselves  as  the  "Orig- 
inal La  Tosca  Social  Club."  The 
court  refused  to  restrain  the  later 
formed  corporation  from  the  use  of  the 
name,  adding  that  the  corporation 
first  formed  had  no  exclusive  right  to 
it.    "  It  is  only  in  plain  cases  of  wrong 


Names  of  Fraternal  Societies 


187 


§  97.  Names  of  Fraternal  Societies.  —  Members  of  a  fra- 
ternal society  may  withdraw  and  organize  a  corporation  under 
any  name  they  desire,  provided  they  do  not  choose  one  so  Hke 
that  of  the  order  they  have  left  as  to  cause  confusion.  The  name 
"Improved  Order  of  Knights  of  Pythias"  was  held  not  to  be 
unfair  to  the  organization  known  as  ''Knights  of  Pythias."  ^*" 

§  98.  Similarity  of  Corporate  Names,  What  is.  —  What 
names  are  "calculated  to  deceive"  and  what  names  are  so 
"different,"  or  "dissimilar,"  as  not  to  tend  to  cause  con- 
fusion or  deceit?  What  standard  can  be  applied  to  measure 
names,  to  discover  whether  or  not  they  are  conflicting?  The 
and  mischief  that  the  court  will  be      fringe   plaintiffs',   and   to  have  been 


disposed  to  apply  the  strong  remedy 
by  injunction  to  restrain  the  use  of  a 
name.  The  business  operation  of  a 
corporation  or  party  should  not  be 
restrained  upon  mere  speculative  or 
possible  injury,  because  of  the  use  of 
a  particular  name  claimed  by  an- 
other. *  *  *  There  is  no  right  to 
the  injunction,  merely  from  the  form 
of  similarity  of  names;  there  must  be 
injury  shown  to  result  therefrom" 
(pp.    105-6). 

Aiello  V.  Montecalfo,  21  R.  I.  496- 
1899.  Held,  on  demurrer,  that  a  good 
cause  of  action  in  equity  was  set  up  by 
a  bill  alleging  that  complainants  main- 
tained a  society  or  club  for  the  purpose, 
in  part,  of  giving  dramatic  entertain- 
ments, that  they  had  from  time  to  time 
given  such  entertainments,  and  had  ad- 
vertised themselves  and  were  well 
known  as  a  club  in  the  city,  and  that  re- 
spondents, in  wrongfully  appropriat- 
ing the  name  of  the  club,  had  caused 
and  would  cause  great  loss  and  dam- 
age to  complainants. 

5^"  Grand  Lodge,  Knights  of  Pythias 
V.  Cresmill,  128  Ga.  775-1907;  58  S.  E. 
163.  Preliminary  injunction  granted 
against  the  obtaining  of  a  corporate 
charter  by  persons  who  had  been 
acting  and  who  proposed  to  incor- 
porate under  a  name  claimed  to  in- 


selected  with  fraudulent  intent. 

Supreme  Lodge,  Knights  of  Pythias  v. 
Improved  Order,  Knights  of  Pythias, 
113  Mich.  133-1897;  71  N.  W.  470; 
38  L.  R.  A.  658.  Complainant  was  in- 
corporated by  special  act  of  congress, 
there  being  already  a  voluntary  asso- 
ciation known  as  the  "Knights  of 
Pythias."  Certain  members  of  the 
Knights  of  Pythias  withdrew  and 
organized  themselves  into  an  unin- 
corporated society  known  as  the  "Im- 
proved Order  of  Knights  of  Pythias." 
Held,  that  defendant's  name  was  not 
calculated  to  mislead.  "While  mem- 
bers withdrawing  from  a  fraternal 
society  are  not  at  liberty  to  associate 
themselves  under  a  name  so  like  the 
name  of  the  parent  order  as  to  be  cal- 
culated to  deceive  ordinary  persons 
proceeding  with  ordinary  care,  they 
may,  subject  to  this  limitation,  use 
any  derivative  of  such  name  that  they 
may  see  fit  to  employ"  (from  head- 
note).  See  also  Knights  of  Macabees 
v.  Searle,  75  Neb.  285;  106  N.  W.  448; 
Daughters  of  Isabella  v.  National 
Order,  83  Conn.  679;  78  Atl.  333, 
Anno.  Case,  1912,  a-822;  B.  P.  0. 
Elks  v.  Improved  B.  P.  0.  Elks,  205 
N.  Y.  459;  Salvation  Army  v.  American 
Salvation  Army,  135  A.  D.  (N.  Y.) 
268. 


188  Corporate  Names 

House  of  Lords  has  said  that  no  witness  is  entitled  to  express  an 
opinion  as  to  this.  The  names  may  be  put  in  evidence,  together 
with  the  facts  as  to  their  use,  and  the  circumstances  surrounding 
the  choosing  of  them;  but  there  is  no  standard,  except  what  the 
court  in  each  particular  case  believes  has  worked  fraud,  or  may 
work  fraud  or  loss  to  the  plaintiff.  The  probability  of  injury 
resulting  from  the  use  of  the  two  names  is  the  test  to  be  applied  by 
the  court  for  the  purpose  of  deciding  whether  or  not  the  name  will 
conflict.  The  "Merchant  Banking  Company"  was  established 
in  1863.  In  1878  the  ''Merchants'  Joint  Stock  Bank  "  was  started. 
No  one  had  been  misled.  The  two  banks  were  at  a  distance  from 
each  other,  although  both  in  London,  and  the  Chancery  Court 
refused  an  injunction,  being  ''satisfied  that  there  is  not  likely  to 
be  any  damage  or  injury  to  the  plaintiffs  at  all,  from  the  act  of  the 
defendants."  ^^  In  most  cases,  however,  such  similar  names 
would  cause  confusion.  The  mere  fact  that  two  concerns  happen 
to  be  widely  separated  geographically  is  no  proof  that  no  confusion 
can  or  will  result  from  the  use  of  the  same  name  by  both.  In 
Ball  V.  Best,^^  Best  &  Co.  in  Chicago  was  held  to  be  in  unfair  com- 
petition with  Best  &  Co.  of  New  York;  and,  again,  two  concerns 
may  be  but  a  short  distance  apart  and  yet  be  fairly  competing,  as 
for  instance:  the  "Fulton  National  Bank  of  New  York"  and  the 
"Fulton  National  Bank  of  Brooklyn."  Again,  names  of  corpora- 
tions may  be  similar  or  exactly  the  same  and  the  companies  be 
located  very  near  each  other  without  creating  any  unfair  com- 
petition if  the  names  are  distinct  and  businesses  dissimilar." 
For  further  discussion  of  this  subject  see  chapter  on  Evidence. 

^^  Merchant   Banking  Co.   v.   Mer-  court  refused  to  "infer"  an  intent  to 

chants'  Joint  Stock  Bank,  9  Ch.  Div.  imitate  and  said,  "I  am  also  satis- 

560-1878.     Probability  of  injury  re-  fied  that  there  is  not  likely  to  be  any 

suiting  from  similar  names  is  some-  damage  or  injury  to  the  plaintiffs  at 

times    taken    into    consideration    by  all  from  the  act  of  the  defendants" 

courts.     Plaintiff,  Merchant  Banking  (at  p.  569). 

Company  of  London,  was  established  "  135  Fed.  434-1905  (C.  C.  111.), 
in  1863.  In  1878,  defendant  estab-  "  Farmers'  Loan  &  Trust  Co.  v. 
lishod  the  Merchants'  Joint  Stock  Farmers'  Loan  &  Trust  Co.  of  Kan- 
Bunk.  There  was  no  evidence  that  sas,  1  N.  Y.  Supp.  44-1888;  21  Abb. 
anyone  had  been  misled  by  the  N.  C.  104.  "It  is  evident,  on  the 
similarity  of  name.  The  two  banks  other  hand,  that  the  use  of  the  same 
were  located  a  considerable  distance  name  would  not  be  enjoined  where 
apart,  one  in  Bloomsbury,  London,  the  parties  were  doing  a  business 
the    other    in    Cannon    street.      The  thereunder    entirely    dissimilar    and 


Names  of  Fraternal  Societies 


189 


distinct;  as,  for  instance,  where  one 
represented  a  banking  business  and 
another  a  locomotive  works.  Nor 
could  the  first  national  bank  estab- 
lished enjoin  every  other  bank  from 
using  the  name  'First  National  Bank'; 
nor  could  the  Mechanics'  National 
Bank  of  New  York  enjoin  the  Me- 
chanics' National  Bank  of  New  Jersey; 
nor  the  Fulton  Bank  of  New  York,  the 
Fulton  Bank  of  Brooklyn.  And  yet, 
if  a  bank  like  the  Chemical  Bank  of 
New  York,  or  any  other  bank,  had 
acquired  in  the  particular  city  a 
valuable  interest  or  proprietary  right 
in  the  name,  the  court  would  not 
hesitate  to  enjoin  another  bank  of  the 


same  name  from  doing  business  in 
the  same  city,  to  its  detriment,  and 
the  confusion  of  the  public"  (at  p. 
47). 

National  Folding  Box  and  Paper  Co. 
V.  National  Folding  Box  Co.,  43  Weekly 
Reporter,  156.  Tlie  plaintiffs  were  an 
American  company  and  in  business  in 
America  and  also  carried  on,  through 
their  agents,  a  large  business  in  Eng- 
land. The  defendants  interfered  with 
this  business  and  adopted  a  name 
which,  in  all  reasonable  probability 
the  court  held,  would  lead  to  their 
goods  being  passed  off  as  goods  manu- 
factured by  the  plaintiffs.  Injunction 
issued. 


CHAPTER  VIIT 
Geographical  Names 

Section  90.  Rule  of  priority. 

100.  One  of  several  who  use  a  common  geographic  name  may  sue  on 

behalf  of  all. 

101.  Secondary  meaning  or  association  between  the  name  and  the 

locality  which  transforms  a  geographic  name  into  a  trade  name. 

102.  Extent  of  pubUc  knowledge  of  secondary  meaning. 

103.  Duration  of  user  necessary  to  acquire  secondary  meaning. 

104.  Degree  of  resemblance  necessary. 

105.  Geographical  or  place  names  which  indicate  origin  and  source 

falsely. 

106.  Residence  in  a  locality  does  not  give  unlimited  right  to  use  the 

name  of  the  locality  as  a  trade  name. 

107.  Relative  location  of  plants  of  rivals  —  effect  on  names. 

108.  Names  of  cities. 

109.  Effect  of  moving  a  plant  or  business. 

110.  Names  of  natural  products. 

111.  Geographic  names  which  indicate  a  process  of  manufacture. 

112.  Geographic  names  may  be  arbitrarily  adopted  as  trade  names. 

113.  Use  of  geographic  names  as  trade-marks  must  be  truthful. 

114.  Geographical  names  which  indicate  quality  as  well  as  origin  or 

source. 

115.  Secondary  meaning  of  semi-geographic  names. 

Geographic  or  place  names  used  as  trade  names  are  of  four 
sorts : 

(1)  Those  indicating  origin.  The  fact  that  a  cloth  is  called 
"Connecticut  Cloth"  and  is  manufactured  in  Connecticut  does 
not,  -per  se,  fix  upon  it  any  badge  of  quahty  whatever,  although 
it  does  show  the  place  from  which  it  comes.  Such  a  name  indi- 
cates origin  —  nothing  more. 

(2)  Those  indicating  a  particular  process  of  manufacture,  viz. : 
that  the  goods  bearing  the  name  come  from  a  locahty  where  such 
goods  are  made  customarily  by  one  particular  process  or  from 
some  particular  material.  The  Kentucky  court  has  held  that 
"Lexington"  mustard  meant  mustard  made  originally  in  the 
factory  of  one  named  Brand,  by  his  particular  process.    "Wor- 

190 


General  Discussion  191 

cester"  china  has  come  to  mean  china  made  in  Worcester,  Eng- 
land, by  the  process  used  in  that  place. 

(3)  A  name  used  arbitrarily  is  used  in  a  manner  in  no  way  con- 
nected with  the  place  the  name  of  which  is  used  on  the  product, 
as,  for  instance,  a  stove  made  and  sold  in  Newark,  being  called 
the  ''Portland,"  or  one  made  in  Baltimore,  being  sold  as  the 
Boston  Stove. 

(4)  Those  indicating  quality.  The  nature  of  the  soil,  or  climate 
of  a  locahty  may  put  upon  certain  of  its  products  an  indehble 
stamp  of  good,  medium,  or  poor  quahty.  ''Connecticut"  tobacco 
is  an  instance  of  this,  for  it  is  known  in  the  tobacco  trade,  that 
only  certain  qualities  of  tobacco  can  be  grown  there. 

Probably  the  leading  case  in  this  country  as  to  unfair  compe- 
tition in  use  of  geographical  names,  and  one  of  the  first  to  lay 
down  the  general  principles  of  unfair  competition  is  McLean  v. 
Fleming} 

"Equity  gives  relief  in  such  a  case,  upon  the  ground  that  one 
man  is  not  allowed  to  offer  his  goods  for  sale,  representing  them 
to  be  the  manufacture  of  another  trader  in  the  same  community. 
Suppose  the  latter  has  obtained  celebrity  in  his  manufacture,  he 
is  entitled  to  all  the  advantages  of  that  celebrity,  whether  result- 
ing from  the  greater  demand  for  his  goods  or  from  the  higher 
price  the  public  are  willing  to  give  for  the  article,  rather  than 
for  the  goods  of  the  other  manufacturer,  whose  reputation  is  not 
so  high  as  a  manufacturer.  Wliere,  therefore,  a  party  has  been 
in  the  habit  of  stamping  his  goods  with  a  particular  mark  or 
brand,  so  that  the  purchasers  of  his  goods  having  that  mark  oi* 
brand  know  them  to  be  of  his  manufacture,  no  other  manufac- 
turer has  a  right  to  adopt  the  same  stamp,  because,  by  doing  so, 
he  would  be  substantially  representing  the  goods  to  be  the  manu- 
facture of  the  person  who  first  adopted  the  stamp,  and  so  would 
or  might  be  depriving  him  of  the  profit  he  might  make  by  the 
sale  of  the  goods  which  the  purchaser  intended  to  buy."  ^ 

The  Supreme  Court  rendered  this  decision  in  1877.  It  was  al- 
most the  first,  if  not  actually  the  first,  case  of  this  character  which 
was  exhaustively  considered  by  that  court.  In  1877,  the  doc- 
trine of  unfair  competition  had  been  but  little  recognized  in  this 
country.     This  case  therefore  shows  very  clearly  the  sources 

1  96  U.  S.  245,  251.  ^  Citing  Seixo  v.   Provezende,   Law 

Rep.,  1  Ch.  195. 


192  Geographical  Names 

from  which  our  law  on  this  subject  has  been  taken.  This  opinion 
cites  twenty-four  English  cases,  seven  New  York  cases,  four 
Massachusetts  cases,  one  Connecticut  case,  and  five  United  States 
cases.  In  Newman  v.  Alvord  (18G7),^  decided  ten  years  before 
the  McLean  case,  Judge  Earl  cites  three  EngHsh  cases,  two  New 
York  cases,  and  one  United  States  case,  the  EngUsh  cases  cited 
being  Seixo  v.  Provezende  ("Seixo  Wine")>'*  and  Lee  v.  Haley 
("Pali  Mall  Guinea  Coal"),"'  all  of  which  have  been  widely  used 
as  authorities  ever  since. 

This  use  of  English  cases  is  mentioned  here  to  show  the  extent 
to  which  English  cases  are  recognized  by  American  courts  as  of 
very  great  authority  on  this  particular  question. 

Lee  v.  Haley,  supra,  was  an  appeal  by  defendant  from  an  inter- 
locutory order,  restraining  him  from  using  the  name  "The  Pall 
Mall  Guinea  Coal  Company,"  in  Pall  Mall,  or  any  other  name 
or  style  so  framed  as  to  be  a  colorable  imitation  of  the  name  or 
style  in  which  the  plaintiff's  branch  business  mentioned  in  the 
bill  was  carried  on,  or  as  to  deceive  the  public,  or  lead  to  the 
belief  that  the  business  carried  on  by  the  defendant  was  the  same 
as  the  business  carried  on  by  the  plaintiffs  under  the  name  or 
style  of  "The  Guinea  Coal  Company,"  or  was  in  any  way  con- 
nected therewith. 

The  plaintiffs  carried  on  an  extensive  business  as  coal  merch- 
ants under  the  style,  "The  Guinea  Coal  Company,"  at  22  Pall 
Mall.  Plaintiffs  were  the  first  to  use  this  style,  but  there  were 
several  more  recent  establishments  doing  business  under  the 
same  name.  Defendant,  one  of  plaintiff's  managers,  left  plain- 
tiff's employ  and  began  business  on  the  Strand  as  "The  Pali  Mall 
Guinea  Coal  Company."  Thereafter  he  moved  to  Pall  Mall, 
and  sent  out  prospectuses  to  the  trade  similar  to  those  sent  out 
by  plaintiffs.  These  prospectuses  contained  his  Strand  address, 
but  had  pasted  over  it  a  paper  on  which  was  printed,  "Removed  to 
46  Pall  Mall."  Plaintiff  discovered  these  facts  in  August,  and 
filed  his  bill  for  injunction  in  November.  There  was  evidence 
that  plaintiff's  custom.ers  had  been  misled  by  defendant's  conduct. 

Sir  G.  M.  Giffard,  L.  J.,  said,  sustaining  the  injunction: 

"It  has  been  strongly  urged  here  that  if  this  injunction  is  sus- 
tained the  Defendant's  trade  will  be  stopped,  but  that  is  not  so; 

'  49  Barb.  588;  51  N.  Y.  189.  »  5  Ch.  App.  Cas.,  L.  R.  155. 

« 1  Ch.  App.,  L.  R.  192. 


General  Discussion  193 

his  trade  will  not  be  stopped  in  the  least,  he  will  only  be  restrained 
from  selling  under  this  particular  name.  He  may  sell  in  Pall  Mall 
coals  at  a  guinea  per  ton  to  his  heart's  content;  the  only  thing  he 
may  not  do  is  to  use  a  name  which  is  calculated  to  induce  customers 
to  come  to  him  under  the  supposition  that  they  are  going  to  the 
Plaintiffs.     *     *     * 

''I  quite  agree  that  they  have  no  property  in  the  name,  but  the 
principle  upon  which  the  cases  on  this  subject  proceed  is,  not  that 
there  is  property  in  the  word,  but  it  is  a  fraud  on  a  person  who 
has  established  a  trade,  and  carries  it  on  under  a  given  name, 
that  some  other  person  should  assume  the  same  name,  or  the 
same  name  with  a  slight  alteration,  in  such  a  way  as  to  induce 
persons  to  deal  with  him,  in  the  belief  that  they  are  dealing  with  the 
person  who  has  given  a  reputation  to  the  name."  (ItaHcs  Author's.) 

As  showing  the  importance  of  Lee  v.  Haley  as  an  authority, 
in  this  country  the  writer  has  noted  that  it  is  cited  and  followed 
in  the  following  cases:  Fuller  v.  Huff,^  Newman  v.  Alvord,''  French 
Republic  v.  Saratoga  Vichy  Co.,^  Mfg.  Co.  v.  Trainer,^  Koehler  v. 
Sanders, ^^  Higgins  v.  Higgins,^^  Shaver  v.  Heller, ^'^  Gebbie  v.  Stitt.^^ 

Lee  V.  Haley  was  preceded  by  the  "London  Conveyance"  case, 
Knott  V.  Morgan.^'^ 

In  1872,  three  years  after  Lee  v.  Haley,  came  Wotherspoon  v. 
Currie,^^  the  Glenfield  starch  case  (also  widely  cited  in  American 
courts), ^^  in  which  the  defendant  went  to  Glenfield  and  there 
used  the  name  in  the  starch  business  in  face  of  the  fact  that  plain- 
tiff's "Glenfield  Starch"  had  been  a  widely  known  brand  for 
years. 

Defendant  Currie  was  a  starch  maker  at  Paisley.  For  many 
years  he  had  lived  at  Glenfield,  however,  and  during  the  whole 
of  the  time  that  plaintiff  and  its  predecessors  had  had  their  works 
at  Glenfield.  In  1868,  Currie  obtained  possession  of  a  small  part 
of  the  premises  at  Glenfield  formerly  used  by  the  plaintiff  and 
began  to  make  starch  under  the  name  "Glenfield  Starch." 

The  defendant's  excuse  for  this  conduct  was  that  he  had  resided 

« 104  Fed.  141.  "  82  Hun,  93. 

'  51  N.  Y.  189.  1^  2  Keen,  213  (Aug.,  1836). 

8 191  U.  S.  435.  "  5  H.   L.,   Eng.   &   Jr.  App.  508 

3 101  U.  S.  55.  (April,  1872). 

1°  122  N.  Y.  65.  1"  See  Gebbie  v.  Stitt,  82  Hun,  93; 

"  144  N.  Y.  462.  Newman   v.   Alvord,   51    N.   Y.    189; 

>2 108  Fed.  821  (C.  C.  A.  8th).  Shaver  v.  Heller,  108  Fed.  826. 


194  Geographical  Names 

in  Glenfield  twenty-four  years;  that  the  water  there  was  excellent 
for  starch  manufacture,  and  that  the  labor  was  cheap. 
Plaintiff's  label  read: 

"GLENFIELD 

PATENT  DOUBLED-REFINED  POWDER 

STARCH, 

EXCLUSIVELY  USED  IN  THE  ROYAL  LAUNDRY, 
AWARDED    THE    PRIZE    MEDAL,     1862. 


Manufactured  by  ROBERT  WOTHERSPOON  &  CO.,  Great  Wellington  Street. 

Kinning  Park,  (and  70  Union  Street,)  Glasgow. 
London  Depot— WOTHERSPOON  &.  CO.,  66,   Uueen  Street,  City." 


Defendant's  label  read: 

"THE    ROYAL   PALACE 

PATENT  POWDER   STARCH. 


CURRIE   &   CO., 

STARCH    AND   CORN    FLOUR    MANUFACTURERS 

GLENFIELD." 

The  name  "Glenfield"  in  each  label  was  the  most  noticeable 
feature.  The  above  is  a  substantial  reproduction  of  the  copy 
of  the  label  as  shown  in  the  report  of  the  case.^^ 

The  Lord  Chancellor  said,  speaking  of  Glenfield: 

"Nor  is  it  a  place  which  has  any  special  circumstances  con- 
nected with  it  (although  something  was  attempted  to  be  said 
about  the  water  used  in  the  manufacture)  which  would  make  the 
starch  manufactured  there  particularly  good  (p.  125).     *     *     * 

"There  was,  therefore,  nothing  whatever  to  give  particular 
celebrity  to  the  name  of  Glenfield  so  connected  with  a  starch 
manufactory,  beyond  the  fact  that  the  Appellants  had  manu- 
factured an  article  known  by  that  name  and  having  a  very  large 
sale  under  that  name.  That,  of  course,  was  a  fact  of  considerable 
importance  and  value  to  anybody  who  should  be  minded  to  ap- 
propriate the  name  of  *  Glenfield '  to  his  starch.     *     *     * 

"It  may  very  well  be  that  hundreds  of  people  like  Glenfield 
"  L.  R.  5  H.  L.  Eng.  &  Irish  App.  at  511. 


General  Discussion  195 

Starch,  and  order  it  because  they  think  that  it  is  the  best  starch 
that  they  ever  used,  without  having  heard  the  name  of  Mr. 
Wotherspoon,  and  without  knowing  him  at  all.  They  say,  I 
want  the  thing  that  bears  that  name,  the  thing  made  in  a  par- 
ticular way,  made  by  the  manufacturer  who  makes  it  in  that  way, 
and  there  being  only  one  manufacturer  who  does  make  it  in  that 
way,  I  want  the  article  made  by  that  manufacturer. 

''That  being  so,  it  appears  to  me  that  the  respondent,  if  he  was 
an  honest  manufacturer  setting  up  in  business,  would  take  great 
care,  and  all  the  more  because  he  was  setting  up  in  business  in  a 
place  where  Gletifield  Starch  had  been  manufactured  and  sold,  to 
disconnect  his  name  with  any  name  which  had  become  exclusively 
a  designation  of  an  article  manufactured  by  the  Appellants. 
There  is  a  passage  in  the  respondent's  answer  in  which  he  says: 
'There  is  no  reason  in  the  world  why  I  should  take  the  name, 
because  I  manufacture  something  superior,  and  at  a  cheaper 
price,  therefore,  why  should  I  take  the  name  of  the  plaintiffs?' 
Well,  then,  one  naturally  asks,  why  should  he  do  anything  to 
lead  people  to  suppose  that  his  name  is  to  be  in  any  way  asso- 
ciated with  Glenfield,  or  this  inferior  article  (as  he  says)  with 
his.  It  must  be  damaging  to  him  that  his  '  Royal  Palace  Starch ' 
should  ever  be  called  Glerifield  Starch.  If  this  statement  of 
his  be  true  he  would  desire  above  all  things  to  dissociate  himself 
from  a  name  by  which  an  inferior  article  could  be  palmed  off  as 
his;  but,  on  the  contrary,  there  is  not  a  tittle  of  evidence  of  his 
ever  having  advertised  his  article  as  '  Royal  Palace  Starch '  alone 
or  gone  about  selling  it  merely  as  'Royal  Palace  Starch.'" 

In  a.  concurring  opinion,  Lord  Chelmsford  said: 

"I  am  satisfied  by  the  evidence  that  the  Respondent's  object 
in  getting  possession  of  a  small  piece  of  standing  ground,  I  may 
call  it,  at  Glenfield,  was  for  the  purpose  of  commencing  opera- 
tions by  acquiring  a  right  to  mention  Glenfield  in  his  advertise- 
ments, and  that  he  followed  this  up  by  trying  how  near  he  could 
come  to  a  deceiving  resemblance  of  the  appellant's  labels,  and 
be  safe  from  a  charge  of  piracy.  By  prominent  mention  of 
Glenfield  in  his  labels,  and  by  the  representations  of  his  agent, 
he  succeeded  in  passing  off  his  starch  as  Glenfield  Starch,  and 
it  appears  by  the  evidence  that  he  has  succeeded  in  drawing  off 
from  the  Appellants  a  great  number  of  their  customers. 

"It  appears  to  me  that  this  case  closely  resembles  that  of  Seixo 


196  Geographical  Names 

V.  Provezende.^^  Under  all  the  circumstances  I  have  not  the 
slightest  hesitation  in  agreeing  with  the  conclusion  at  which  my 
noble  and  learned  friend  has  arrived." 

Lord  Westbury  said : 

"I  take  it  to  be  clear  from  the  evidence,  that  long  antecedently 
to  the  operations  of  the  Respondent,  the  word  Glenfield  had 
acquired  a  secondary  signification  or  meaning  in  connection  with 
a  particular  manufacture  —  in  short,  it  had  become  the  trade 
denomination  of  the  starch  made  by  the  Appellants.  It  was 
wholly  taken  out  of  its  ordinary  meaning,  and  in  connection 
with  starch  had  acquired  that  peculiar  secondary  signification 
to  which  I  have  referred.  The  word  Glenfield,  therefore,  as  a 
denomination  of  starch,  had  become  the  property  of  the  Ap- 
pellants. It  was  their  right  and  title  in  connection  with  the 
starch. 

"Now  the  question  is,  has  that  property  been  invaded  by  the 
Respondent?  I  take  the  whole  proceedings  of  the  Respondent 
from  the  beginning  to  the  end  to  be  nothing  in  the  world  more 
than  a  contrivance  for  the  purpose  of  getting  the  word  Glenfield 
associated  with  his  manufacture.  *  *  *  j  have  no  doubt, 
therefore,  that  this  case  comes  within  the  principle  on  which 
the  jurisdiction  is  founded  —  the  principle  being  to  prevent  a 
party  from  fraudulently  availing  himself  of  the  trade-mark  of 
another  which  has  already  obtained  currency  and  value  in  the 
market,  by  whatever  means  he  may  devise  for  the  purpose,  pro- 
vided the  means  are  devised  in  order  to  give  him  a  colorable  title 
to  the  use  of  the  word,  and  provided  it  be  shewn  from  the  manner 
in  which  he  had  employed  those  means  that  his  object  was  from 
the  beginning  to  invade  the  property  of  the  Appellants.  That  is 
clearly  demonstrated  in  the  present  case,  to  my  mind." 

An  injunction  was  granted,  "restraining  the  respondent,  his 
servants  and  agents,  from  using  the  word  'Glenfield,'  in  or  upon 
any  labels  affixed  to  packets  of  starch  manufactured  by  or  for  him, 
and  from  in  any  other  way  representing  the  starch  manufactured 
by  or  for  him  to  be  'Glenfield  Starch,'  and  from  selling  or  causing 
the  same  to  be  sold  as  'Glenfield  Starch,'  .and  from  doing  any  act 
or  thing  to  induce  the  behef  that  starch  manufactured  by  or  for 
him,  the  respondent,  is  'Glenfield  Starch,'  or  starch  manufactured 
by  the  appellants,"  etc. 

>8  L.  R.  1  Ch.  App.  192. 


General  Discussion  197 

In  1891,  the  House  of  Lords  decided  the  ''Stone  Ale"  case, 
another  case  where  a  plaintiff  had  gone  to  a  town  where  an  es- 
tablished business  was  located,  to  compete  with  that  concern, 
both  using  the  town  name  as  a  trade  name.  This  case  is  cited 
by  Clarke,  J.,  in  Kayser  v.  Italian  Co.;  ^^  in  Shaver  v.  Heller,"-^ 
and  many  other  American  cases. 

Montgomery  v.  Thompson, '^'^  ("Stone  Ale"  case):  Appeal 
to  House  of  Lords  from  Court  of  Appeal,  affirming  an  interloc- 
utory order  and  granting  a  perpetual  injunction  against  the  de- 
fendant. Thompson,  the  plaintiff  (respondent  in  the  House  of 
Lords),  and  his  predecessors  had  bottled  ale  at  a  town  in  England 
called  Stone,  100  years  or  more  prior  to  1891.  This  ale  had 
come  to  be  known  as  ''Stone  Ale,"  the  term  "Stone  Ale"  being 
applied  to  a  superior  quality  of  ale,  while  the  general  term  "Stone 
Ales"  was  apparently  applied  to  all  of  his  product.  During 
this  time  this  brewery  was  the  only  one  in  Stone.  It  was  claimed 
by  the  defendant  that  the  water  in  Stone  contributed  to  the 
quality  of  this  ale,  but  this  fact  was  not  proved.  About  1890, 
a  publican  at  Liverpool  moved  to  Stone,  and  set  up  a  brewery 
under  the  name  "Montgomery's  Stone  Brewery."  There  is  no 
evidence  that  he  did  any  fraudulent  act  beyond  merely  adopting 
the  name  "Stone."  He  contended  that  he  had  a  perfect  right 
to  use  the  name  "Stone  Brewery,"  as  long  as  he  used  it  in  com- 
bination with  other  words  which  sufficiently  distinguished  his 
manufacture  from  that  of  the  plaintiff's.  Stone  Ale  was  also  ad- 
vertised under  the  name  of  "Joule  Co.,"  and  "Joule  Co.'s  Stone 
Ale."  Although  it  does  not  appear  in  the  report  of  this  case,  the 
fact  was  that  Joule  &  Sons  sold  ale  both  as  "Stone  Ale"  and 
"  Stone  Ales."  The  former  was  a  special  quality  selling  at  a 
higher  price  than  the  general  stock  of  ale  sold  by  them. 

The  perpetual  injunction  appealed  from  restrained  the  de- 
fendant "from  carrying  on  the  business  of  a  brewer  at  Stone, 
under  the  title  'Stone  Brewery,'  or  'Montgomery's  Stone  Brew- 
ery,' or  under  any  other  title  so  as  to  represent  that  the  defend- 
ant's brewery  is  the  brewery  of  the  plaintiffs,  and  from  selling  or 
causing  to  be  sold  any  ale  or  beer  not  of  the  plaintiff's  manufac- 
ture under  the  term  'Stone  Ales,'  or  'Stone  Ale,'  or  in  any  way  so 
as  to  induce  the  belief  that  such  ale  or  beer  is  of  the  plaintiff's 

>9 160  App.  Div.  N.  Y.  607  (1914).  2«"  (1891)  A.  C.  217. 

2«108  Fed.  821;  65  L.  R.  A.  833. 


198  Geographical  Names 

manufacture,  and  from  infringing  the  plaintiff's  registered  trade- 
marks or  any  of  them"  (p.  218). 

The  defendant  did  not  claim  that  an  injunction  should  not  have 
been  granted,  but  maintained  that  the  one  granted  was  too  broad 
in  its  terms  in  that  it  forbade  the  use  of  the  terms  "Stone  Ales" 
or  ''Stone  Ale"  in  any  manner. 

In  affirming  the  form  of  injunction,  the  House  of  Lords  held: 

"I  do  not  think  the  principle  on  which  the  court  ought  to  act 
in  such  a  case  as  the  present  is  open  to  doubt.  The  respondents 
are  entitled  to  ask  that  a  rival  manufacturer  shall  be  prevented 
from  selling  his  ale  under  such  a  designation  as  to  deceive  the 
public  into  the  belief  that  they  are  obtaining  the  ale  of  the  re- 
spondents, and  he  ought  not  the  less  to  be  restrained  from  doing 
so,  because  the  practical  effect  of  such  restraint  may  be  much 
the  same  as  if  the  persons  seeking  the  injunction  had  a  right  of 
property  in  a  particular  name. 

"It  appears  to  me  idle  to  argue  in  opposition  to  the  injunction 
that  it  is  against  the  public  interest  to  permit  a  monopoly  of 
the  use  of  the  name  of  a  town  for  trade  purposes,  when  the  only 
effect  of  allowing  its  use  by  the  person  and  for  the  purpose  sought 
to  be  restrained  would  be  to  deceive  the  public"  (220)  (Herschell). 

"I  am  of  opinion  that  any  attempt  by  the  defendant  to  sell  ale 
or  beer  of  his  own  brewing  as  '  Stone  Ales,'  or  as  '  Stone  Ale,'  would 
constitute  an  infringement  of  the  plaintiff's  right.  Whether  it  is 
possible  for  the  defendant  to  use  the  word  'Stone'  with  such 
differentisB  as  will  distinguish  his  manufacture  from  what  has 
hitherto  been  known  as  'Stone  Ales'  and  'Stone  Ale,'  and  to  keep 
outside  the  obvious  and  natural  scope  of  the  injunction,  is  a  mat- 
ter for  his  own  consideration"  (221-222)  (Watson). 

"Here  the  evidence  has  satisfied  Chitty,  J.  (Judge  at  Circuit), 
and  the  Court  of  Appeal,  and  I  think  ought  to  satisfy  your  Lord- 
ships, that  the  respondent's  goods  had  acquired  by  long  usage 
the  name  of  'Stone  Ale,'  and  'Stone  Ales';  that  that  name  does 
not  merely  convey  the  idea  that  the  beer  was  manufactured  at 
Stone,  but  that  it  was  the  ale  of  the  respondents'  manufacture. 
The  appellant  is  undoubtedly  entitled  to  brew  ale  at  Stone,  and 
to  indicate  that  it  was  manufactured  there,  but  there  are  various 
means  of  stating  that  fact  without  using  the  name  which  has 
now  become  the  designation  of  the  respondent's  ale"  (227) 
(Hannen). 


General  Discussion  199 

^'Whatever  reputation,  therefore,  is  attached  to  Stone  Ales,  or 
Stone  Ale,  above  other  ales  known  in  the  district,  is  due  to  the 
plaintiffs  and  their  predecessors  in  business.  The  value  of  that 
reputation,  whatever  it  is,  no  one  knows  better  than  the  appel- 
lant. He  is  the  proprietor  of  several  hotels  and  public  houses 
in  Liverpool,  and  in  his  different  establishments  he  has  dealt 
largely  in  Stone  Ales  procured  from  the  plaintiffs.  In  1887  he 
determined  to  set  up  a  brewery  himself.  He  had  to  find  a  site 
for  his  business.  Where  was  he  to  go?  After  much  consider- 
ation, influenced  as  he  says  by  the  peculiar  virtue  of  the  water, 
he  resolved  to  go  to  Stone.  One  thing  leads  to  another.  Having 
gone  to  Stone,  he  could  think  of  no  better  name  for  his  brewery 
than  'Stone  Brewery';  he  could  find  no  more  fitting  designation 
for  his  ales  than  'Stone  Ale.'  Then  came  these  proceedings.  It 
is  not  the  first  time  in  these  cases  that  water  has  got  an  honest  man 
in  trouble,  and  then  failed  him  at  a  pinch.  Neither  Chitty,  J., 
nor  the  learned  Lord  Justices  could  be  persuaded  that  the  appel- 
lant was  attracted  to  Stone  by  the  peculiar  virtue  and  chemical 
properties  of  the  water.  They  thought  he  went  there  simply  with 
the  object  of  stealing  the  plaintiff's  trade,  and  in  the  hope  of  reap- 
ing where  he  had  not  sown.  They  were  satisfied  that  he  meant  to 
make  a  fraudulent  use  of  the  term  'Stone  Ales,'  and  that  he  could 
not  possibly  use  the  term  honestly"  (222)  (MacNaughton) . 

In  respect  to  the  form  of  injunction  the  House  of  Lords  said: 

"  I  do  not  see  my  way  to  alter  it  at  all,  except  by  making  it  more 
stringent  and  more  severe.  And  that  would  hardly  be  fair  to 
the  appellant  on  his  appeal.  I  think  that  an  order  in  the  terms 
read  by  my  noble  and  learned  friend  opposite  (Lord  Watson), 
an  injunction  in  the  form  of  that  granted  in  Seixo  v.  Provezende,^^ 
would  have  better  met  the  justice  of  this  case.     *     *     * 

"It  is  obvious,  I  think,  that  if  the  injunction  had  been  in  that 
form,  the  appellant  could  not  have  used  the  term  'Stone  Ales' 
at  all.  It  would  have  been  impossible  for  him  to  have  called  his 
ales  'Stone  Ales,'  and  to  have  distinguished  his  ales  from  those  of 
the  plaintiff.  Any  attempt  to  distinguish  the  two,  even  if  honestly 
meant,  would  have  been  perfectly  idle.  Thirsty  folk  want  beer, 
not  explanations.  If  the  public  get  the  thing  they  want,  or  some- 
thing near  it,  and  get  it  under  the  old  name  —  the  name  with 
which  they  are  familiar  —  they  are  likely  to  be  supremely  indif- 

"  L.  R.,  1  Ch.  192. 


200  Geographical  Names 

ferent  to  the  character  and  coitiduct  of  the  brewer,  and  the  equita- 
ble right  of  rival  traders"  (MacNaughton). 

§  99.  Rule  of  Priority.  —  In  cases  involving  geographic  and 
family  names  which  become  trade  names  are  found  the  strongest 
reasons  for  refusing  to  interfere  with  the  unlimited  use  of  a  name. 
Both  parties  often  have  most  meritorious  claims  to  the  right  to 
use  it  in  trade.  But  here,  as  in  so  many  other  similar  situations, 
the  law  has  found  the  rule  of  priority  to  work  justice.  Says 
Holmes,  J.,  in  The  American  Waltham  Co.  v.  United  States  Watch 
Co.,-  in  which  the  question  was  as  to  the  use  of  the  word  ''Wal- 
tham": "Whatever  might  have  been  the  doubts  some  years 
ago,  we  think  that  now  it  is  pretty  well  settled  that  the  plaintiff, 
merely  on  the  strength  of  having  been  first  in  the  field,  may 
put  later  comers  to  the  trouble  of  taking  such  reasonable  pre- 
cautions as  are  commercially  practicable  to  prevent  their  law- 
ful names  and  advertisements  from  deceitfully  diverting  the 
plaintiff's  custom,"  *  *  *  "In  cases  of  this  sort,  as  in  so 
many  others,  what  ultimately  is  to  be  worked  out  is  a  point  or 
line  between  conflicting  claims,  each  of  which  has  meritorious 
grounds  and  would  be  extended  further  were  it  not  for  the  other. 
It  is  desirable  that  plaintiff  should  not  lose  custom  by  reason 
of  the  public  mistaking  another  manufacturer  for  it.  It  is  de- 
sirable that  the  defendant  should  be  free  to  manufacture  watches 
at  Waltham,  and  to  tell  the  world  that  it  does  so.  The  two 
desiderata  cannot  both  be  had  to  their  full  extent  and  we  have 
to  fix  the  boundaries  as  best  we  can"  (id.,  p.  86). 

In  cases  involving  semi  public  names,  priority  of  use  does  not 
give  to  the  user  rights  analogous  to  the  rights  obtained  by  the 
adoption  of  a  fanciful  word,  which  may  become  a  technical  trade- 
mark ;  but  priority  of  use  of  a  semi-public  name  is  always  impor- 
tant in  considering  the  equities  involved. 

§  100.  One  of  Several  Who  Use  a  Common  Geographic  Name 
May  Sue  on  Behalf  of  All.  —  The  question,  as  to  who  may  be  a 
party  complainant,  who  has  a  right  to  demand  for  a  geographic 
name  the  protection  of  equity  arose  in  the  Rosendale  Cement 
case.^^  In  that  case  defendants  sold  "Anchor  Rosendale  Ce- 
ment" at  Lehigh  county,  Pennsylvania,  making  it  from  stone 

"  173  Mass.  85-87-1899;  53  N.  E.  Co.  v.  Coplay  Cement  Co.,  44  Fed. 
141;  43  L.  R.  A.  826.  277-1890   (C.   C.   A.);   10  L.   R.   A. 

^^  New   York   &   Rosendale  Cement     833. 


One  May  Sue  on  Behalf  of  Sevekal  201 

quarried  there.  Complainants  made  cement  at  Rosendale,  New 
York,  where  there  were  fifteen  or  twenty  cement  rock  quarries, 
some  of  which  had  been  worked  for  fifty  years.  Complainants 
began  to  work  theirs  in  1874.  The  product  of  all  these  quarries 
has  always  been  known  as  Rosendale  cement.  Complainants 
contended  that  the  name  had  acquired  a  generic  significance. 
Joseph  P.  Bradley,  Justice,  held:  ''No  doubt  the  sale  of  spurious 
goods,  or  holding  them  out  to  be  different  from  what  they  are,  is  a 
great  evil,  and  an  immoral,  if  not  an  illegal,  act;  but  unless  there 
is  an  invasion  of  some  trade-mark,  or  trade  name,  or  peculiarity 
of  style,  in  which  some  person  has  a  right  of  property,  the  only 
persons  legally  entitled  to  judicial  redress  would  seem  to  be 
those  who  are  imposed  upon  by  such  pretenses.  The  public,  of 
course,  is  deeply  interested  in  their  suppression,  and  if  the  laws 
are  deficient,  the  legislature  might  very  justly  intervene  to  pre- 
vent impositions  of  this  kind  by  public  prosecution  of  the  of- 
fenders; but  to  give  a  civil  action  to  every  honest  dealer  against 
every  dishonest  one  engaged  in  the  same  trade  would  vex  the 
courts  and  the  country  with  an  excess  of  multitudinous  litiga- 
tion. *  *  *  In  our  view,  if  a  person  seeks  to  restrain  others 
from  using  a  particular  trade-mark,  trade  name,  or  style  of  goods, 
he  must  show  that  he  has  an  exclusive  ownership  or  property 
therein.  To  show  that  he  has  a  mere  right,  in  common  with 
others,  is  insufficient"  (id.  p.  279). 

An  injunction  was  refused  and  later  the  same  case  was  moved 
for  rehearing,^*  and  Bradley,  J.,  affirmed  himself  and  said:  ''A 
cigar  manufacturer  of  Havana  cannot  maintain  a  claim  of  trade- 
mark in  'Havana  Cigars.'  If  a  dealer  in  New  York  sells  cigars 
as  Havana  cigars  which  are  not  such,  it  may  be  fraud,  but  it 
is  no  violation  of  a  trade-mark  which  can  be  claimed  by  all  the 
cigar-makers  of  Havana.  *  *  *  So  all  cement  manufacturers 
in  Rosendale  and  its  vicinity  may  rightly  call  their  manufactured 
article  'Rosendale  Cement,'  but  any  other  person  may  go  to 
Rosendale  and  manufacture  cement  there,  and  have  the  same 
right.  There  is  no  exclusive  property  in  the  name,  even  in  those 
who  now  reside  there,  or  carry  on  the  manufacture  there.  It  is 
open  to  all  the  world.  In  our  judgment  there  is  not,  there  cannot 
be,  any  trade-mark  in  the  name  of  the  place"  (id.  p.  213). 

The  result  of  this  case,  then,  was  a  denial  of  the  right  of  a 

^MSFed.  212-1891. 


202  Geographical  Names 

dealer  in  a  position  like  that  of  one  of  the  cement  makers  of 
Rosendale,  to  protect  the  name  which  all  of  them  used,  against 
dealers,  outside  of  Rosendale,  who  were  using  the  name.  It 
was  true  there  could  be  no  trade-mark  in  the  name,  but  the  case 
was  really  one  of  unfair  competition  not  one  of  trade-mark,  and 
if  buyers  of  cement  were  deceived  as  to  the  source  or  origin  of 
the  cement  which  the  defendants  sold,  the  injunction  should 
have  been  granted. 

In  Pillsbury-Washburn  Flour  Mills  Co.  v.  Eagle, ^•'  a  bill  was 
brought  on  behalf  of  all  flour  dealers  making  Minneapolis  flour 
and  was  upheld,  and  various  other  cases  have  been  since  decided, 
which  have  laid  down  a  different  rule,  in  this  regard,  from  that 
of  the  Rosendale  case.  This  decision  of  Judge  Bradley  was 
criticised  by  Putnam,  J.,  in  1892,  in  City  of  Carlsbad  v.  Tibbetts,^^ 
as  follows:  "I  fear  that  the  rule  laid  down  by  Justice  Bradley 
may  be  held  to  be  the  law  in  the  United  States;  although  to  one 
who  knows  the  history  of  the  manufacture  of  Rosendale  cement, 
it  would  seem  just,  on  a  bill  filed  by  any  cement  manufacturer 
li^that  locality  in  behalf  of  himself  and  other  manufacturers,  to 
proKct  against  an  injury  to  the  honest  dealer  coupled  with  a 
fraud  OH  the  public.  The  fact  that  many  have  a  common  in- 
terest in  the  same  subject-matter  ought  not  to  deprive  one  of 
the  many  from  being  protected  against  an  injury  to  the  whole; 
and,  whatever  difficulties  there  might  be  in  a  suit  at  law  for  dam- 
ages in  behalf  of  one  manufacturer  among  many,  as  pointed  out 
by  Justice  Bradley,  there  is  no  more  inconvenience  in  proceeding 
in  equity  in  such  cases,  than  on  bills  in  behalf  of  parishioners  to 
establish  a  general  modus,  or  of  commoners  respecting  rights  of 
common,  or  of  one  taxpayer  in  behalf  of  all  others  in  the  town, 
all  of  which  are  well-recognized  subjects  of  equity  jurisdic- 
tion. *  *  *  It  is  certain  that,  in  case  of  the  'Stone  Ale'  re- 
ferred to,  and  also  in  the  case  of  the  'Glenfield  Starch,'  reported 
as  Wotlierspoon  v.  Currie,'^''  and  noted  in  Lawrence  Mfg.  Co.  v. 
Tennessee  Mfg.  Co.,^^  the  use  of  the  name  of  the  town  was  pro- 
tected, under  special  circumstances." 

In  1899,  several  California  corporations,  engaged  in  that  state 

»  86  Fed.  608;  41  L.  R.  A.  162.  ^MSS  U.   S.   537-1891;  34   L.  ed. 

2«  51  Fed.  852-.56.  997;  11  Sup.  Ct.  396. 

"L.  R.  5  Eng.  &  Irish  App.  508- 
1872. 


Secondary  Meaning  of  Geographical  Names        203 

in  canning  pears  grown  there  and  known  to  the  trade  as  "CaH- 
fornia  Pears,"  sued  one  Myer,  who  canned  pears  grown  in  Mary- 
land and  adjoining  states,  but  marked  them  as  "Cahfornia 
pears;"  and  it  was  held  that,  while  no  one  person  could  appro- 
priate the  words  ''California  Pears,"  all  those  who  put  up  fruit 
grown  in  California  were  entitled  to  use  these  words,  and  they 
would  be  protected  by  injunction  against  the  fraudulent  use  of 
labels  designating  as  California  pears  fruit  that  was  grown  and 
put  up  elsewhere.  ^^ 

It  would  seem  then  that  any  one  dealer  of  a  group,  all  of  whom 
use  a  particular  place  name,  should  have  standing  in  equity  to 
demand  protection  against  any  competitor  who  is  using  the  name 
which  is  used  by  him  and  his  neighbors,  to  their  damage.  The 
fact  that  others  share  the  right  to  use  the  name  does  not  lessen 
the  loss  he  suffers  or  give  any  better  standing  to  the  rival  who  is 
stealing  his  business  unfairly.  The  true  test  is  found  in  the  ques- 
tion as  to  whether  or  not  the  name  used  has  become  so  associated 
with  the  product  of  complainant  and  his  neighbors  as  to  cause 
fraud  when  used  by  anyone  else. 

§  101.  Secondary  Meaning  or  Association  between  the  Name 
and  the  Locality  which  Transforms  a  Geographic  Name  into  a 
Trade  Name.  —  The  association  between  the  goods  of  the  com- 
plainant and  the  place  name  in  question  must  be  clear.  One  may 
go  from  any  part  of  the  world  to  Rosendale  and  begin  to  make, 
advertise  and  sell  cement  there,  free  from  interference  by  the 
courts;  but  he  may  not  make  cement  in  any  other  place  and 
sell  it  as  coming  from  Rosendale,  for  by  so  doing  he  will  confuse 
his  product  with  that  of  dealers  there;  nor  may  he  use  the  name 
''Rosendale"  in  connection  with  the  sale  of  his  cement  in  such 
a  way  as  to  deceive.  His  product  may  be  better  than  that  of  the 
Rosendale  quarries,  but  that  does  not  excuse  him.  He  may  not 
dictate  to  buyers.  They  have  a  right  to  be  dealt  with  fairly. 
That  they  prefer  cement  from  Rosendale,  though  it  cost  more  and 
is  inferior  to  his  cement,  is  no  concern  of  his.^*^ 

"^^  California   Fruit   Canners'   Assn.  cement,     which     it     called     "Rugby 

V.  Myer,  104  Fed.  82  (Cir.  Ct.  Md.  Portland  Cement."     Defendant  or  its 

1899).  predecessor  had  also  for  some  years 

^°  Rugby  Portland  Cement  Co.,  Ltd.,  manufactured  Portland  cement,  with 

V.  Rtcgby  &  N.  P.  C.  Co.,  Ltd.,  9  R.  P.  which  it  had  occasionally  filled  orders 

C.    46-48-1891.      Plaintiff    had    for  for   "Rugby   Portland  Cement,"   al- 

some    time    manufactured    Portland  tliuugh   it  did   not  invoice  it  under 


204  Geographical  Names 

On  this  point  the  Supreme  Court  says:  "The  name  of  a  per- 
son or  a  town  may  have  become  so  associated  with  a  particular 
product  that  the  mere  attaching  of  that  name  to  a  similar  product 
without  more  would  have  all  the  effect  of  a  falsehood."  ^^ 

''Geographical  names  often  acquire  a  secondary  signification 
indicative  not  only  of  the  place  of  manufacture  or  production,  but 
of  the  name  of  the  manufacturer  or  producer  and  the  excellence 
of  the  thing  manufactured  or  produced,  which  enables  the  owner 
to  assert  an  exclusive  right  to  such  name  as  against  everyone  not 
doing  business  within  the  same  geographical  limits;  and  even  as 
against  them,  if  the  name  be  used  fraudulently  for  the  purpose  of 
misleading  buyers  as  to  the  actual  origin  of  the  thing  pro- 
duced, or  of  palming  off  the  productions  of  one  person  as 
those  of  another."^^  On  this  subject  see  also  §§  36-41,  46,  72, 
100,  111. 

In  cases  of  this  sort  a  distinction  must  be  made  between  names 
which  are  local,  that  is,  which  are  associated  with  a  certain  specific 
locahty,  and  those  which,  while  based  on  the  name  of  a  place,  are 
associated  with  the  business  which  is  located  in  this  particular 
place  known  by  this  name.  In  the  first  instance  they  serve  as  a 
sort  of  directory — a  signboard  to  all  who  see  the  name,  which 
tells  them  where  the  concern  using  the  name  is  located.     For  that 

that    name.      Both    companies    were  don  was  a  borough  and  "the  name 

located  near  but  not  in  Rugby.    The  which  an  individual  may  give  to  his 

plaintiff  was  denied  an  injunction,  the  estate  is  unlike  that  which  legislative 

court  saying:  "The  plaintiffs  cannot  sanction  has  given  to  a  municipal  cor- 

monopolize    the    use    of    the    name  poration.    The  rights  of  the  public  in 

'Rugby'  as  applied  to  all  Portland  each  are  radically  different"  (p.  470). 

cement   made   out   of   the   blue   lias  Plaintiff's  sole  right  to  use  a  word  was 

formation   which   is   situated   in   the  denied,  although  the  bill  alleged  that 

neighborhood    of    Rugby."  name  had  come  to  mean  in  iron  trade 

Glendon  Iron  Co.  v.  Uhler,  75  Pa.  St.  the  iron  of  the  plaintiffs,  which  was 

467-1874.    Both  parties  made  iron  in  of    peculiar   grade,    and   the   referee 

borough    of    Glendon,    incorporated,  found  the  principal  facts  as  set  out 

Plaintiff  began  to  make  use  of  word  in  the  bill. 

"Glendon"  in  1844,  and  in  1871  de-  ^^  H err ing-H all-Marvin  Safe  Co.  v. 

fendants   began    to   mark  their   iron  Hall's  Safe  Co.,   208  U.  S.   554-59- 

with    that    name     and     the    letters  1908,  citing  Walter  Baker  &  Co.  v. 

"U.   F.",   their   initials.     The   Glen-  <SZac^%  130  Fed.  514-1904. 

field    starch    case   was   distinguished  ^^  French  Republic  v.  Saratoga  Vichy 

in  that  Glenfield  was  an  estate  where  Co.,  191  U.  S.  427-35-1903;  48  L.  ed. 

about  sixty  people  lived,  while  Glen-  217;  24  Sup.  Ct.  145. 


Extent  of  Public  Knowledge  of  Trade  Meaning   205 

concern  to  move  and  take  the  name  along  with  it,  would  serve  to 
deceive  the  public.  In  the  second  instance,  the  name  goes  with 
the  business  and  is  a  trade  name. 

In  Armstrong  v.  Kleinhans,  a  building  was  leased  before  com- 
pletion to  plaintiff.  A  large  sign  with  the  words  ''Tower 
Palace,"  paid  for  by  plaintiff  and  the  owner,  was  placed  on  the 
building.  The  name  was  chosen  by  the  owner.  The  plaintiff,  a 
clothier,  advertised  his  business  widely  in  connection  with  the 
sign.  Subsequently  he  moved,  taking  the  sign  to  his  new  loca- 
tion without  the  owner's  consent.  A  new  sign  was  erected  by 
the  owner  and  the  building  leased  to  the  defendant,  a  clothier. 
Held,  the  sign  described  the  building  not  the  plaintiff's  business 
and  an  injunction  would  not  lie.^^ 

§  102.  Extent  of  Public  Knowledge  of  Secondary  Meaning.  — 

Unfair  competition  does  not  deal  with  place  names  when  they  are 
used  in  their  usual  signification,  but  with  those  in  which  someone 
has  acquired  a  special  right  or  property,  —  when,  in  other  words, 
they  are  used  in  an  unusual  sense.  Such  rights  are  acquired  by 
user  —  by  association. 

The  knowledge  of  such  user  need  not  be  universal ;  it  is  enough 
that  it  exists  among  such  persons  as  knew,  at  the  time  the  action 
is  brought,  of  the  existence  of  complainants'  business  or  goods. ^^ 
''Universality  of  recognition,  therefore,  is  not  required.  What 
is  required  is  that  a  substantial  section  of  the  purchasing  public 
should  be  proved  to  identify  the  trade  name  with  the  plaintifT's 


"82  Ky.  303-1884;  56  Am.  Rep.  Tower  Palace  Carpet  Store."  That 
894.  Plaintiff  sought  to  remove  from  sign  was  on  the  building  when  the 
a  storehouse,  No.  150  West  Market  defendant  took  possession.  The  court 
street,  occupied  by  the  defendant,  a  held  that  the  building  was  named  by 
sign  reading  "Tower  Palace"  and  to  the  owner.  The  plaintiff  advertised 
enjoin  them  from  using  these  words  in  his  business  extensively.  There  was 
any  way.  From  1871  to  1877,  plaintiff  evidence  to  show  that  since  his  re- 
had  occupied  this  building.  When  moval  he  had  lost  business  because 
he  left  the  building  he  took,  without  of  the  Market  street  house  being  still 
consent  of  the  owner,  the  sign  from  called  "Tower  Palace."  Held,  that 
its  place  and  put  it  upon  the  house  to  the  name  described  the  place  —  the 
which  he  removed.  When  the  OAvner  building  —  not  the  business,  or  the 
took  possession  he  put  a  new  sign  person  carrying  it  on,  and  was  never 
reading  "Tower  Palace"  where  the  used  as  a  trade-mark  by  the  plaintiff, 
other  had  been  and  called  his  store  '*  Faulder  v.  Rushton,  20  R.  P.  C. 
while  he  occupied  the  building  "The  477,  1902. 


206  Geographical  Names 

goods,  and  that  this  should  be  true  of  the  district  in  which  the 
defendant's  trade  is  done."^^ 

The  fact  that  plaintiff's  sales  have  been  small  is  not  a  defense 
to  the  action.^"  If,  however,  the  plaintiff's  goods  are  absolutely 
unknown  in  the  defendant's  territory,  there  could  be  no  passing 
off.  But  if  the  plaintiff's  goods  are  even  slightly  known  there  — 
that  is  to  such  extent  as  not  to  be  negligible  —  then  the  plaintiff 
should  be  protected. ^^  Questions  of  this  sort,  however,  must  be 
considered,  having  in  mind  the  right  of  the  plaintiff,  the  first  user 
to  all  benefit  of  his  mark  that  comes  from  a  lawful  extension 
of  his  market  in  new  territory  — •  and  in  all  territory  in  which 
the  mark  may  not  now  be  known.  The  court  will  not  set  geo- 
graphic limits  to  the  expansion  of  a  business  in  these  cases  in  the 
absence  of  estoppel  or  laches  on  plaintiff's  part.  Hanover  Star 
Milling  Co.  v.  Metcalf.^'" 

The  question  often  arises  as  to  the  extent  of  a  district  in  which 
the  right  to  a  certain  name  may  be  claimed.  Does  it  apply  to  a 
township  or  merely  to  a  parish  or  village  or  to  an  entire  country- 
side? Local  conditions  necessarily  govern  these  cases.  In  Bra- 
ham  v.  Beachim,^^  it  was  held  that  "Radstock  Colliery"  might 

3*  Cutler,  Passing  Off,  p.  48.  liery  Proprietors,  Coal  &  Coke  Office." 
^8  Ibid.,  p.  52  .  Fry,  J.,  held,  when  plaintiff  changed 
"  Braham  v.  Beachim,  7  Ch.  Div.  name  from  Radstock  Coal  Co.  and 
848-1878.  Ratstock  Coal  Works  defendants  were 
"°  240  U.  S.  403  (1906).  bound  as  honorable  men  not  to  follow 
38  7  Ch.  Div.  848-1878.  Plaintiff  suit.  Plaintiff,  as  sole  owner  of  col- 
owned  all  collieries  in  parish  of  Rad-  lieries  in  Radstock  parish,  is  pre- 
stock.  The  same  seam  of  coal  was  sumably  alone  entitled  to  call  herself 
worked  outside  the  parish  by  others.  "Radstock  Coal  Proprietor."  "The 
Before  1848,  predecessors  of  the  plain-  fact  that  a  vein  of  Radstock  coal  runs 
tiffs  used  name  "Radstock  Coal  Co."  out  of  parish  of  Radstock  does  not  en- 
and  later  "Radstock  Coal  Works."  title  all  workers  of  it  to  describe  them- 
Defendants,  in  1868  began  as  "Rad-  selves  as  Radstock  Colliery  Pro- 
stock  Wagon  Co.,"  using  name  "Rad-  prietors.  The  genus  includes  the 
stock  Coal  Co."  Confusion  resulted  species  and  by  using  name  of  Rad- 
and  plaintiff  adopted  "The  Rt.  Hon.  stock  coal  proprietors  defendants  rep- 
thc  Countess  Waldegrave's  Radstock  resented  themselves  as  selling  coals 
Collieries."  Defendants  then  used  of  plaintiff  and  others  which  comes 
name  "The  Radstock  Colliery  ,Pro-  under  description  Radstock  coal, 
prietors."  They  then  put  up  the  sign  There  is  great  distinction  between 
"The  Radstock  Colliery  Proprietors  Radstock  Colliery  (which  may  mean  a 
Coal  k  Coke  Office,"  and  later  still  colliery  within  the  district)  and  a 
"The  Radstock  Coal  Company,  Col-  colUery   at    Radstock,    because    that 


Duration  of  User  Necessary  to  Secondary  Meaning   207 

mean  a  colliery  within  a  district  called  by  the  name  Radstock  or  a 
colliery  within  Radstock  parish  proper;  and  further,  that  the 
parish  had  not  given  its  name  to  all  the  collieries  on  the  coal  vein 
in  that  neighborhood.  A  name  often  has  many  meanings.  New 
York  is  the  name  of  a  state,  a  county,  and  a  city.  All  the  facts 
of  each  particular  use  must  be  studied,  to  discover  the  meaning 
of  the  names  as  used  in  the  case  under  consideration.  Is  the  use 
of  the  name  an  honest  one,  an  accurate  one;  is  it  used,  not  to 
imitate  but  to  separate,  to  differentiate? 

What  is  the  understanding  of  the  average  man  —  the  general 
public  —  as  to  the  meaning  of  the  name?  This  question  is  far 
more  important,  in  the  eyes  of  the  court,  than  the  fixing  of  boun- 
daries. The  meaning  of  a  geographic  name  and  the  extent  of 
the  section  to  which  it  applies,  may  be  said  to  be  qualified  by  the 
section  from  which  orders  or  customers  may  be  expected  to  come. 
In  some  instances  this  might  mean  a  large  part  of  the  civilized 
world,  in  others  a  few  blocks  in  a  city.  What  is  a  merchant's 
market?  His  protection  should  be  coextensive  with  that  at  least. 
See  §  38. 

§  103.  Duration  of  User  Necessary  to  Acquire  Secondary 
Meaning.  —  The  duration  of  user  required  to  create  a  secondary 
meaning  can  be  measured  by  no  accurate  test.  In  the  Yorkshire 
Relish  case  the  time  was  twenty-five  years,  in  the  Silverpan  Jam 
case,  about  fourteen  years,  in  the  Anatolia  Licorice  case,  six  weeks. 
From  these  instances  it  will  be  seen  that  there  is  no  rule  as  to  the 
length  of  time  required.  It  must  be  governed  by  the  conditions 
in  each  case,  depending  on  the  locality,  the  nature  of  the  business, 
and  the  kind  of  goods  involved. 

The  difference  between  a  natural  meaning,  an  abstract  mean- 
ing and  a  trade  meaning  may  be  illustrated  by  the  terms  ' '  Carls- 
bad Sprudel  Salts,"  which  means  only  salts  from  Carlsbad,  ''Ep- 
som Salts,"  which  means  either  salts  from  Epsom  or  merely  Sul- 
phate of  Magnesia,  and  "Oneida  Traps"  which  means  traps 
made  only  by  one  concern  regardless  of  where  made.^^ 

means  a  colliery  within  the  parish  of  until  they  acquire  a  colliery  in  parish 

Radstock  and  I  do  not  beUeve  that  the  of  Radstock. 

parish  has  given  its  name  to  all  the  ^^  City  of  Carlsbad  v.   Kutnoiv,   71 

colheries    in    the    Radstock    series"  Fed.   167-1895;  35  U.  S.  App.  750; 

(p.  856).     Defendants  enjoined  from  18  C.  C.  A.  24.     Lacombe,  J.,  said: 

use  of  Radstock  ColUery  Proprietors  "The  Carlsbad  Sprudel  Salts  in  either 


208 


Geographical  Names 


§  104.  Degree  of  Resemblance  Necessary. — The  resemblance 
necessary  to  constitute  unfair  competition  in  these  cases  of  geo- 
graphical names  is  the  same  as  with  other  names.  There  must 
be  ambiguity.  There  must  be  such  confusion  as  will  bring  some 
loss  or  injury  to  those  who  have  already  built  up  a  business  of 
their  own.  The  primary  right  of  all  to  use  the  geographical 
names  must  be  considered  in  connection  with  the  other  right 
which  each  man  has  to  be  free  from  fraudulent  competition.  A 
further  discussion  of  the  question  of  similarity  and  secondary 
meaning  is  found  in  the  chapter  on  "Evidence." 

§  105.  Geographical  or  Place  Names  Which  Indicate  Origin 
and  Source  Falsely. —  The  importance  to  the  business  world  of 
place  names  not  being  lying  brands  but  truthful  representations 


form,  therefore,  is  a  natural  product, 
and  well  known  as  such;  and  there  is 
no  proof  in  the  case  that  the  com- 
plainants have  used  the  name  Carls- 
bad upon  any  but  genuine  Carlsbad 
Sprudel  Salts.  And  we  concur  with 
the  circuit  judge  in  the  finding  that 
there  is  no  evidence  in  the  record  that 
any  artificial  salts  have,  from  similar- 
ity or  otherwise,  come  to  be  known 
by  the  name  of  Carlsbad,  as  is  the 
case  with  the  Epsom  Salts,  a  term 
now  generally  applied  to  sulphate  of 
magnesia,  whether  such  sulphate  of 
magnesia  comes  from  Epsom  or  not. 
Under  these  circumstances  the  com- 
plainant, the  city  of  Carlsbad,  has 
the  right  to  indicate  the  origin  of 
these  natural  salts  by  its  own  name, 
and  would  be  entitled  to  the  aid  of 
a  court  of  equity  to  prevent  anyone 
from  using  that  name  to  induce  the 
public  to  accept  as  genuine  arti- 
ficial salts  not  the  product  of  the 
Carlsbad  Spring"  (at  p.  757). 

Oneida  Community  v.  Oneida  Game 
Trap  Co.,  Inc.,  168  A.  D.  (N.  Y.)  769; 
1915,  McAndrew  v.  Bassett,  4  De  G.  J. 
&  S.  380-1864.  The  plaintiffs  were 
large  manufacturers  of  licorice.  They 
styled  this  Ucorice  "Anatoha,"  which 


was  the  name  applied  to  a  whole  tract 
of  country  wherein  licorice  root  is 
largely  grown.  At  the  time  plaintiffs 
began  to  use  the  word  there  was  no 
other  manufacturer  of  licorice  stamp- 
ing it  with  the  word.  Subsequently, 
in  response  to  an  order  for  Anatolia 
licorice,  defendants  caused  a  stamp 
to  be  prepared  containing  the  word 
"Anatolia"  and  put  it  on  the  goods 
and  afterward  continued  to  use  it. 
The  court  below  granted  a  perpet- 
ual injunction  restraining  the  use  of 
the  word  "Anatolia"  by  the  defend- 
ants on  licorice.  In  response  to  the 
argument  that  the  word  "Anatolia" 
was  common  to  all,  the  court  said: 
"  *  *  *  Property  in  the  word 
for  all  purposes  cannot  exist,  but 
property  in  that  word,  as  applied  by 
way  of  stamp  upon  a  particular  ven- 
dible article  as  a  stick  of  licorice,  does 
exist  the  moment  the  article  goes  into 
the  market  so  stamped,  and  there 
obtains  acceptance  and  reputation, 
whereby  the  stamp  gets  currency  as 
an  indication  of  superior  quality,  or  of 
some  other  circumstance,  which  ren- 
ders the  article  so  stamped  acceptable 
to  the  public"  (p.  386). 


Names  Which  Indicate  Origin  Falsely  209 

as  to  the  identity  of  the  maker  of  the  goods  on  which  they  appear 
is  recognized  by  equity.  If  anyone  who  wishes  may  use  a  name, 
whether  technical  trade-mark  or  not,  untruthfully,  or  if  he  may 
use  a  name  which  gives  false  information  as  to  his  goods,  the 
result  is  fraud  on  the  public,  loss  of  business  by  the  plaintiff,  and 
a  loss  of  incentive  to  dealers  to  create  individual  reputations  for 
themselves  and  their  goods.  Reputations  cannot  exist  apart 
from  names.  It  is  important  then,  that  names  indicating  source 
or  origin  of  goods  should  be  most  accurately  used  and  should, 
when  truthful,  be  given  full  protection.  One  may  not  make  ''  Min- 
neapohs  Flour"  in  Wisconsin,  when  the  term  ''MinneapoHs  Flour" 
is  already  in  use  as  the  name  of  a  product  made  in  Minneapolis. 
Everyone  is  free  to  go  to  that  city,  and  make  flour  there,  and  it  may 
be  that  his  product  may  properly  be  called  ''Minneapohs  Flour" 
if  that  term  as  used  in  the  flour  trade  parlance  means  merely 
"flour  made  at  Minneapohs"  or  ''made  by  the  methods  in  general 
use  in  Minneapolis."  He  cannot  so  use  it  if  the  name  has  come 
to  mean  the  goods  of  some  one  particular  concern.  To  use  that 
name  on  flour  made  in  any  other  place  than  Minneapolis  under 
these  conditions  is  to  use  it  in  fraud  of  the  rights  of  manufac- 
turers in  Minneapolis;  is  to  use  it  so  as  to  make  of  it  a  lying  brand, 
a  name  giving  false  information;  is  to  misrepresent  the  source  or 
origin  of  the  goods.  ^'^  If  one  person  be  allowed  to  use  such  a  lying 
brand,  all  may,  and  the  good-will  of  various  concerns,  built  up  by 
years  of  work,  will  be  injured  and  perhaps  rendered  valueless. 
If  the  private  interests  involved  in  this  question  are  great,  the 

*°  Pillsbury-Washburn  Flour  Mills  and  'Minneapolis,  Minnesota.'  The 
Co.,  Ltd.,  V.  Eagle,  86  Fed.  608-1898;  defendant  might  have  continued  to 
30  C.  C.  A.  386;  41  L.  R.  A.  162,  re-  buy  Minneapolis  flour,  and  branded  it 
versing  82  Fed.  816-1897.  "The  'IMinneapoHs,  Minnesota,'  and  had 
complainants  can  have  no  exclusive  all  the  benefit  which  these  marks 
right  to  the  use  of  the  geographical  would  give  him  in  the  market,  be- 
names  of  'Minneapolis'  or  'Minne-  cause  he  would  be  adhering  to  truth 
sota.'  They  are  not  the  subject  of  a  and  fair  dealing.  But  when  he  placed 
trade-mark  proper.  Any  one  or  more  these  same  brands  upon  another  flour, 
of  the  two  hundred  thousand  in-  manufactured  in  Wisconsin,  he  de- 
habitants  of  Minneapolis  may  use  that  parted  from  the  truth,  and  placed  a 
word  upon  their  flour.  The  defendant  lying  brand  upon  his  goods,  which  was 
or  any  other  person  from  any  state  intended  to  deceive,  and  could  not  but 
may  go  there  and  establish  a  mill  and  deceive,  the  public  and  result  in  injury 
brand  his  flour   'Minnesota   Patent'  to  the  complainants'  business." 


210 


Geographical  Names 


public  interests  are  greater,  for  the  public  has  a  right  to  insist 
upon  the  use  of  honest  brands. 

Persons  doing  business  at  places  other  than  those  bearing  the 
name  they  use  on  their  goods  will  not  be  permitted  to  use  this 
geographical  name  as  a  brand  or  label,  merely  for  the  purpose  of 
fraud  and  false  representation  and  to  appropriate  the  good-will 
of  a  business  which  another  has  built  up  under  this  name  by  long- 
continued  industry  and  skill  and  a  generous  use  of  capital. 

To  sell  artesian  well-water  as  "Blue  Lick  Water,"  which  the 
public  would  understand  from  the  name  to  mean  water  from  a 
spring  well  known  to  many,  is  fraud.  If  a  purchaser  calls  for 
Carlsbad  salts  he  has  a  right  to  be  sure  the  article  comes  from 
Carlsbad  and  not  New  York.  To  use  that  name  upon  artificial 
salts  made  in  New  York  is  to  deceive  the  purchaser  as  to  the 
origin  of  the  goods,  the  place  from  which  they  came,  and  to 
state  an  untruth.  He  may  be  injured,  and  the  trader  who  is 
using  the  name,  accurately,  to  describe  the  source  of  the  goods, 
may  be  defrauded  of  profits  which  are  the  result  of  his  work  in 
building  up  his  business  under  the  name,  now  wrongfully  used  by 
his  competitor.  "^^ 


■•1  City  of  Carlsbad  v.  Kutnow,  68 
Fed.  794-1895,  affirmed,  35  U.  S. 
App.  750-1895,  71  Fed.  167.  The 
City  of  Carlsbad  as  proprietor  of  tlie 
Carlsbad  Springs,  had  for  years 
evaporated  the  waters  into  salts, 
which  were  sold  as  "Carlsbad  Sprudel 
Salz."  Defendants,  who  were  New 
York  druggists,  made  a  similar  salt, 
without  the  use  of  the  genuine  Carls- 
bad water,  and  sold  it  under  the  name 
"Improved  Effervescent  Carlsbad 
Powder."  Held,  that  if  any  arti- 
ficial salts  have  come  to  be  known  by 
the  name  of  "Carlsbad  Salts,"  from 
similarity  or  otherwise,  the  defend- 
ants have  the  same  right  to  sell  such 
salts  by  that  name  that  they  have  to 
sell  anything  by  the  name  by  which 
it  is  known.  If  the  defendants  pro- 
oured  genuine  Carlsbad  waters  or 
salts,  and  put  them  up  in  different 
forms,  or  with  other  ingredients,  to 


improve  their  taste  or  vary  their  ef- 
fects, these  words  used  would  be 
truthful,  and  they  would  seem  to 
have  a  clear  right  to  use  them  in  such 
preparations;  but  the  plaintiffs'  proof 
tends  to  show  that  the  defendants' 
salts  are  not,  in  substance,  genuine 
Carlsbad  salts,  in  any  form.  No 
proof  has  been  brought  showing  that 
the  plaintiffs  have  used  the  name  of 
"Carlsbad"  upon  any  but  genuine 
Carlsbad  Sprudel  Salts,  and  the  de- 
fendants use  the  name  "Carlsbad" 
upon  artificial  salts  ha\ang  no  connec- 
tion with  that  name  because  of  its 
connection  with  the  genuine  Carlsbad 
Sprudel  Salts.  Carlsbad,  with  its 
springs,  is  far  away.  This  use  of  its 
name  in  connection  with  a  preparation 
so  similar  to  this  well-known  product 
of  them  is  some  representation  that 
it  is  a  genuine  product  of  them.  Call- 
ing the  powder  "Improved  Carlsbad" 


Residence  Does  not  Give  Unlimited  Right 


211 


§  106.  Residence  in  a  Locality  does  not  give  Unlimited  Right 
to  use  the  Name  of  the  Locality  as  a  Trade  Name.  —  The  fact 
that  a  person  takes  up  his  residence  in  a  locahty  or  locates  a 
manufactory  there  does  not  give  the  right  to  him  to  use  that 
name  as  a  trade  name,  if  by  so  doing  fraud  or  unfair  competition 
will  be  created.  A  company  organized  under  the  name  ''Oneida 
Game  Trap  Co.,  Inc.,"  and  first  located  in  Niagara  Falls  and  then 
moved  to  Oneida,  N.  Y.,  and  there  began  to  make  and  sell  traps. 
It  happened  that  for  many  years  another  concern,  the  "Oneida 
Community,  Ltd.,"  located  in  Oneida  City  and  on  the  Oneida 
River  had  made  traps  of  which  the  popular  or  trade  name  had 
come  to  be  "Oneida  Traps,"  and  "Oneida  Game  Traps."  The 
new  corporation  was  enjoined  from  using  its  corporate  name  or 


is  a  direct  representation  that  genuine 
Carlsbad  powder  has  been  taken  to  be 
improved  upon;  and  calling  it  also 
"effervescent"  is  a  representation  that 
the  improvement  is  in  the  efferves- 
cence. This  is  putting  the  plaintiffs' 
mark  to  some  extent  upon  the  de- 
fendants' salts,  and  is  calculated  to 
lead  customers  to  think  they  are  the 
salts  of  the  plaintiffs.  Such  deception 
would  be  actionable  at  law,  and  is 
preventable  in  equity.  Improved  Fig 
Syrup  Co.  v.  California  Fig  Syrup  Co., 
4  C.  C.  A.  264-1893;  54  Fed.  175; 
Von  Mumm  v.  Frash,  56  Fed.  830- 
1893. 

Parkland  Hills  Blue  Lick  Water 
Co.  V.  Hawkins,  95  Ky.  502-1894;  26 
S.  W.  389.  Plaintiff  marketed  "Blue 
Lick  Water"  since  1888.  Defendant 
later  began  to  sell  "Parkland  Hills 
Blue  Lick  Water,"  words  Blue  Lick 
being  very  prominent  on  their  label. 
Their  water  came  from  an  artesian  well 
at  Lexington.  Blue  Lick  spring  used 
by  plaintiff  had  been  famous  for  more 
than  one  hundred  years.  "Name 
Blue  Lick  indicated  origin  and  owner- 
ship or  place  of  the  product  and  is 
one  in  the  exclusive  use  of  which  the 
appellees  should  be  protected.     The 


proof  discloses  a  scheme  by  which, 
when  a  thirsty  patron  *  *  * 
called  for  Blue  Lick  water,  *  *  * 
he  was  to  be  given  water  from  the 
artesian  well  of  the  appellant.  This 
was  no  less  a  fraud  on  the  pubUc  than 
on  the  appellee." 

Compania  General  de  Tahacos  v. 
Rehder,  5  R.  P.  C.  61-1887  (Ch. 
Div.).  Plaintiffs  succeeded  to  the 
business  of  the  Spanish  govern- 
ment in  the  manufacture  of  cigars, 
and  continued  to  use  the  same  labels 
and  marks,  including  the  word  "Ca- 
vite,"  the  name  of  a  district  in  which 
the  cigars  were  manufactured.  De- 
fendants were  using  for  their  cigars 
labels  closely  resembling  plaintiff's 
and  were  likewise  using  the  name 
Cavite.  It  was  not  proved  that  their 
goods  were  manufactured  in  the 
district  of  Cavite.  Interlocutory  in- 
junction granted. 

Wheeler  v.  Johnson,  3  L.  R.  Ir. 
284-1879.  Use  of  words  Cromac 
Springs  for  name  of  waters  from  a 
spring  at  a  locality  called  Cromac 
will  be  protected  if  defendant  uses 
the  name  so  as  to  pass  off  the  waters 
he  sells  as  those  of  the  plaintiff. 


212 


Geographical  Names 


the  name  "Oneida  Game  Traps"  although  it  was  actually  located 
in  Oneida.^- 

§  107.  Relative  Location  of  Plants  of  Rivals  —  Effect  on 
Names.  —  The  fact  that  the  place  where  the  defendant  makes 
his  goods  or  where  he  procures  raw  material  is  near  to  the  spot 
from  the  name  of  which  the  name  of  his  rival's  goods  is  taken, 
is  no  justification  for  his  using  that  name  to  the  injury  of  an- 
other. That  clay  is  taken  out  of  the  same  seam  or  vein,  although 
in  a  place  distant  from  the  spot  where  a  rival  is  located,  and 
that  this  clay  is  of  the  same  quality  constitutes  no  justification.''^ 


■•2  Oneida  Community,  Ltd.,  v.  Oneida 
Game  Trap  Co.,  168  A.  D.  769-1915. 

Phenix  Cheese  Co.  v.  Kennedy  et  al., 
U.  S.  Dist.  Ct.  (Eastern  Dist.  of 
Pennsylvjuiia)  May  18,  1915. 

^^  Dunnachie  v.  Young,  10  Scot. 
Sess.  Cas.  (4th  ser.  X)  874-1883.  Dun- 
nachie was  on  Glenboig;  the  clay  the 
plaintiff  used  was  found  and  manu- 
factured there;  and  in  putting  the 
name  of  the  place  into  this  trade- 
mark he  was  only  following  the  course 
ordinarily  pursued.  The  respondents 
were  not  on  Glenboig.  "In  taking 
that  word,  they  took  it  only  because 
it  denoted  goods  known  in  the  market 
to  be  of  high  quality,  and,  if  they  are 
to  find  virtue  in  it,  this  will  only  be 
because  those  who  at  first  or  second- 
hand are  the  purchasers  of  their  goods 
read  the  word  as  indicated  that  the 
goods  are  the  product  of  a  manufac- 
tory other  than  Ileathfield.  The  re- 
spondents try  to  justify  their  assump- 
tion of  Glenboig,  first,  on  the  ground 
that  their  clay  is  of  the  same  seam;  and 
second,  that  the  word  'Glenboig'  as 
used  by  them  is  qualified  by  the  word 
'Young's'  and  so  misapprehension  not 
to  say  deception  is  prevented.  The 
fact  assumed  is  the  former  of  these 
grounds,  and  has,  I  think,  been  estab- 
lished, but  it  is  insufficient  as  a  justifi- 
cation. The  least  that  can  be  said  on 
the  subject  is  that  the  word,  as  used,  is 


ambiguous.  That,  in  my  opinion, 
would  be  enough.  Why  should  the 
respondents  use  a  word  that  may 
mislead  people  to  buy  their  goods  as 
the  goods  of  the  complainants?  If 
all  the  respondents  desired  to  sug- 
gest is  that  their  bricks  are  made  of 
the  clay  of  the  Glenboig  seam  raised 
on  Heathfield,  a  word  or  words  could 
be  introduced  by  which  this  could  be 
communicated"  (p.  886).  Seixo  v. 
Provezende,  1  Ch.  App.  192-1865. 
Since  1848,  plaintiff  had  marked  his 
wine  "Seixo,"  with  his  coronet 
stamped  over  it.  In  1862  defendant 
put  on  the  market  "Seixo  de  Cima" 
(upper  Seixo).  Seixo  means  stony  or 
pebbly,  like  Steinwein  in  German. 
Defendant's  vineyards  were  on  Sitio 
de  Seixo  (district  of  Seixo).  Plaintiff 
owned  Quinta  de  Seixo  (Seixo  Estate). 
"Assuming  the  truth  of  what  is  con- 
tended for  by  the  defendants,  i.  e., 
that  parts  of  their  vineyards  are 
known  by  the  name  Seixo,  that  does 
not  justify  them  in  adopting  a  device 
or  brand  the  probable  effect  of  which 
is  to  lead  the  i)ublic  when  purchasing 
their  wine  to  suppose  that  they  are 
purchasing  wine  produced  from  the 
vineyards  not  of  the  defendants,  but 
of  the  plaintiff"  (at  p.  198).  Dis- 
tinguishing Leather  Cloth  Co.  v.  Amer- 
ican Leather  Co.,  11  Jur.  N.  S.  513- 
1865. 


Names  of  Cities 


213 


§  108.  Names  of  Cities.  —  Anyone  has  the  right  to  use  the 
name  of  a  city  as  the  name  of  his  goods,  as  a  general  principle, 
but  not  the  right  to  do  so  to  the  injury  of  another  trader  or  manu- 
facturer using  the  name  rightfully.  St.  Louis  has  become  known 
for  the  quality  of  white  lead  made  there.  For  a  Chicago  manu- 
facturer of  lead  to  call  his  product  St.  Louis  lead,  to  the  injury 
of  St.   Louis  dealers,  is  unfair.  ^^     The  right  of  all  citizens  of 


Bewlay  &  Co.,  Ltd.,  v.  Hughes, 
15  R.  P.  C.  290-1898.  Plaintiffs  had 
for  some  time  been  selling  cigars 
named  from  a  district  in  India  "Flor 
de  Dindigul."  Defendant  afterward 
began  selling  cigars  under  the  brand 
"Cigarro  de  Dindigul,"  claiming  the 
right  to  do  so  on  the  ground  that 
the  tobacco  came  from  Dindigul  in 
India.  He  was  enjoined  from  using 
the  name  "Cigarro  de  Dindigul,"  or 
from  using  the  name  "Dindigul"  at 
all  without  clearly  distinguishing  his 
cigars  from  plaintiffs'. 

A.  F.  Pike  Mfg.  Co.  v.  Cleveland 
Stone  Co.,  35  Fed.  896-98-1888.  The 
names  "Green  Mountain,"  "Wil- 
loughby  Lake,"  "Lamoille,"  and 
others  as  designating  scythe  stone, 
had  been  used  bj'^  complainant  and  its 
predecessors  for  a  number  of  years. 
Defendants  acquired  a  quarry  ad- 
jacent to  complainant's,  and  branded 
theirs  in  the  same  way.  It  was  urged, 
first,  that  the  brands  employed  by 
defendants  did  not  infringe.  Defend- 
ants used  the  exact  words  "Lamoille," 
"Green  Mountain"  and  others,  but  in 
place  of  "Willoughby  Lake,"  em- 
ployed the  title  "Willoughby  Ridge." 
It  was  urged  that  "Lamoille"  and 
"Willoughby  Lake"  were  geograph- 
ical terms.  The  defendants  quarried 
stones  200  miles  from  Lamoille  county 
and  Willoughby  Lake,  and  applied  to 
this  stone  the  names  "Lamoille"  and 
"Willoughby  Ridge."  Assuming  that 
complainants    cannot    have    a    valid 


trade-mark  in  these  names,  it  seems 
settled  that  a  manufacturer  will  be 
protected  in  the  use  of  a  geographical 
name  as  against  one  who  does  not 
carry  on  business  in  the  district  so 
designated.  Blackwell  v.  Dibrell,  3 
Hughes,  151,  Fed.  Cas.  No.  1,475- 
1878;  Newman  v.  Alvord,  49  Barb.  588- 
1867;  affirmed  in  51  N.  Y.  189-1872. 

Blackwell  &  Co.  v.  Dibrell  &  Co.,  3 
Hughes  (U.  S.),  151-178;  Fed.  Cas. 
1,475  (C.  C.  Va.).  Complainants  were 
successors  to  one  who,  taking  up  a 
small  tobacco  business  at  a  little  place 
called  Durham,  adopted  the  word 
"Durham"  with  the  figure  of  a  bull 
as  a  trade-mark,  and  developed  a  very 
large  business.  The  neighborhood  of 
Durham  came  to  be  known  for  the 
quality  of  the  smoking  tobacco  there 
grown;  and  the  place  grew  and  be- 
came well  known,  owing  largely  to 
the  development  of  the  business  of 
the  complainants'  predecessors.  Held, 
that  complainants  were  entitled  to  the 
exclusive  use  of  the  word  and  figure, 
particularly  as  against  competitors 
manufacturing  elsewhere  than  at  Dur- 
ham. 

**  Southern  White  Lead  Co.  v.  Cary, 
25  Fed.  125-1885.  Complainant,  a 
manufacturer  of  white  lead  in  St. 
Louis,  stamped  upon  its  kegs  the 
words,  "Southern  Company,  St.  Louis, 
Warranted  Strictly  Pure  White  Lead 
in  Pure  Linseed  Oil."  St.  Louis  had 
an  established  reputation  for  pure 
white  lead,  and  complainant  had  main- 


214 


Geographical  Names 


a  city  to  use  its  name  in  christening  their  goods  will  not  excuse 
.their  using  it  so  as  to  injure  their  rivals  by  deceit,  fraud,  or  trick- 
ery.   An  illustration  of  such  a  use  of  a  city  name  is  found  in  the 


taincd  for  years  a  large  trade  at  that 
place  as  manufacturer.  Defendants 
manufactured  their  lead  at  Chicago, 
branding  it  "Southwestern  St.  Louis." 
Surrounding  the  words  "Strictly  Pure 
White  Lead,"  the  words  "South- 
western St.  Louis"  appearing  in  the 
same  form  as  the  words  "Southern 
Company,  St.  Louis,"  and  a  label  on  it 
stating  it  was  strictly  pure.  Analysis 
showed  complainant's  lead  to  be  pure 
and  defendant's  to  be  adulterated. 
Held,  Gresham,  C.  J.,  that  "the  de- 
fendants so  brand  the  heads  of 
their  kegs  as  to  naturally  mislead  and 
induce  persons  purchasing  for  con- 
sumption to  suppose  they  are  pur- 
chasing complianant's  lead,  when  they 
are  getting  an  inferior  article.  The 
brand  used  by  the  defendants  is  so 
like  the  complainant's  as  to  induce  the 
pubhc  to  mistake  the  one  for  the  other. 
The  defendants  sell  their  goods  to 
retail  dealers,  and  it  may  be  that  such 
dealers  are  not  deceived,  but  they  sell 
to  consumers  who  are  or  may  be  de- 
ceived. The  complainant  is  entitled 
to  relief,  if  the  brand  used  by  the 
defendants  sufficiently  resembles  the 
complainant's  brand  to  be  mistaken 
for  it,  and  the  defendants  adopted 
their  brand  for  the  purpose  of  selling 
their  kegs  as  the  kegs  of  complain- 
ant, or  for  the  purpose  of  enabling 
retail  dealers  to  do  so,  and  the  com- 
plainant has  been  injured  by  this 
fraud,  or  is  likely  to  be  injured  by  it. 
The  complainant  manufactures  its 
genuine  white  lead  at  St.  Louis,  and 
its  reputation  is  already  established 
as  a  manufacturer  and  dealer  of  this 
character.  The  defendants  manufac- 
ture   their    adulterated    and    greatlj-^ 


inferior  lead  at  Chicago,  and  stamp 
upon  their  kegs  a  false  brand  in 
imitation  of  the  complainant's  brand. 
Why  is  this  done  unless  it  be  in  the 
hope  of  deceiving  the  public  and 
injuring  the  complainant?  Realizing 
that  they  could  not  engage  in  open 
manly  competition  with  the  complain- 
ant, the  defendants  resort  to  a  pal- 
pable trick.  If  this  resulted  in  no 
injury  to  the  complainant,  or  was 
likely  to  result  in  no  injury  to  it,  the 
bill  would  have  to  be  dismissed.  But 
the  affidavits  show  that  the  defend- 
ants' kegs  can  and  have  been  sold  as 
the  complainant's"  (id.  p.  126). 
Huntley  &  Palmer  v.  Reading  Biscuit 
Co.,  Ltd.,  10  R.  P.  C.  277-1893. 
Plaintiffs  had  long  made  at  Reading 
biscuits  very  widely  known  as  "Read- 
ing biscuits."  In  many  cases  the  tins 
were  so  marked  and  the  words  were 
used  in  catalogues.  Plaintiffs  were 
substantially  the  only  biscuit  manu- 
facturers in  Reading.  Defendant 
corporation  was  formed  by  the  owners 
of  an  existing  bakery  business,  estab- 
lished at  Reading,  to  manufacture 
biscuits  under  the  name  of  The 
Reading  Biscuit  Company,  but  had 
not  yet  commenced  business.  Injunc- 
tion granted  against  the  use  of  the 
word  "Reading"  in  connection  with 
biscuits  not  manufactured  by  plain- 
tiff, unless  clearly  distinguished  from 
plaintiff's  goods.  Chitty,  J.,  says: 
"  It  is  necessary  to  look  carefully  into 
cases  like  the  present,  because  it  does 
not  depend  on  the  form;  it  does  not 
depend  on  how  it  is  done,  or  the  names 
which  the  defendants  in  cases  of  this 
kind  endeavor  to  set  up.  The  court 
has   to   look   at   the   substance   and 


Names  of  Cities  215 

*'St.  Louis  Beer"  cases.    This  beer  was  sold  in  South  America 
and  Panama,  as  well  as  in  the  United  States. 

In  Anheuser-Busch  Brewing  Association  v.  Piza,*^  complainant 
did  business  at  St.  Louis,  Mo.,  and  had  been  accustomed  to  ex- 
port beer  in  bottles  with  a  label  bearing  the  words  "St.  Louis 
Lager  Beer"  to  South  America  and  Panama.  Neither  defendant 
nor  any  other  person  in  the  export  trade  had  been  accustomed  to 
use  the  words  "St.  Louis  Lager  Beer."  Defendant  shipped  beer 
from  New  York  in  competition  with  complainant.  It  was  shown 
that  at  Panama  and  in  South  America  "St.  Louis  Lager  Beer" 
was  in  demand.  Defendant's  beer  was  made  in  New  York  and 
his  bottles  were  so  labeled  as  to  represent  that  the  beer  was  made 
at  St.  Louis,  and  that  his  firm  were  the  sole  agents  for  the  St. 
Louis  lager  beer.  He  insisted  that  buyers  did  not  discriminate 
between  complainant's  article  and  other  beer  made  in  the  United 
States,  but  bought  it  simply  because  they  supposed  St.  Louis 
beer  was  produced  in  the  United  States,  as  distinguished  from 
German  and  EngHsh  beer,  but  the  court  said:  "This  may  be 
true;  but,  if  it  is,  it  does  not  seem  to  be  conclusive  against  the 
right  of  the  complainant  to  the  injunction  which  he  seeks.  As 
the  goods  of  the  parties  go  to  the  same  markets  it  can  hardly  fail 
to  happen  that  the  complainant  will  lose  sales,  and  the  defendant 
will  get  customers,  in  consequence  of  the  defendant's  acts.  Al- 
though the  complainant  cannot  have  an  exclusive  property  in  the 
words  'St.  Louis'  as  a  trade-mark,  or  an  exclusive  right  to  desig- 
nate its  beer  by  the  name  'St.  Louis  Lager  Beer,'  yet,  as  its  beer 
has  always  been  made  at  that  city,  its  use  of  the  designation  upon 
its  labels  is  entirely  legitimate;  and  if  the  defendant  is  diverting 
complainant's  trade  by  any  practices  designed  to  mislead  its 
customers,  whether  these  acts  consist  in  simulating  its  labels,  or 
representing  in  any  other  way  his  products  as  those  of  the  com- 
plainant, the  latter  is  entitled  to  protection.  It  is  no  answer  for 
the  defendant,  when  the  complainant  asks  for  protection,  to 
say  that  it  has  no  exclusive  right  to  designate  its  product  in  the 

when   the   court   finds   that   in  sub-  the  duty  of  the  court  to  interfere" 

stance,     notwithstanding    there     are  (at  p.  280). 

many    things    which    the    defendant  ^^  24  Fed.  149-50-51-1885.    See  also 

could   do   which   are   legitimate   and  Oneida   Community,    Ltd.,   v.   Oneida 

within  his  right,  yet  he  is  so  contriv-  Game  Trap  Co.,   168  A.  D.  (N.  Y.) 

ing  them  as  to  take  away  something  769-1915. 

which  belongs  to  another  man,  it  is 


216  Geographical  Names 

manner  it  has,  although  this  might  very  properly  be  asserted  by 
a  competitor  selling  beer  made  at  St.  Louis,  or  who,  by  reason  of 
any  circumstances,  might  be  entitled  to  represent  his  product  as 
originating  there.'"'  *  *  *  It  is  sufficient  that  it  was  lawful 
for  the  complainant  to  use  that  name  (St.  Louis)  to  designate 
its  property;  that  by  doing  so  it  has  acquired  a  trade  which  is 
valuable  to  it;  and  that  the  defendant's  acts  are  fraudulent  and 
create  a  dishonest  competition  detrimental  to  the  complainant.  "'*''" 

§  109.  Effect  of  Moving  a  Plant  or  Business.  —  The  right  to 
use  a  geographic  name  indicating  source  is  not  lost  because  the 
one  using  it  moves  his  plant  to  a  place  which  does  not  bear  the 
name  which  has  been  thus  used  as  a  trade  name.  This  is  not  a 
reason  why  he  may  not  continue  to  claim  protection  in  the  use  of 
the  name  of  the  place  where  he  was  formerly  located,  if  it  has, 
prior  to  the  time  of  his  removal,  acquired  a  secondary  meaning, 
as  used  by  him,  which  will  cause  fraud  and  deceit  of  purchasers,  if 
used  by  another,  even  though  that  other  is  making  the  goods  at 
the  place  whence  the  first  mentioned  maker  had  removed. 

For  instance,  one  G.  in  1891  acquired  the  plant,  stock,  good- 
will and  all  rights  in  a  well-established  business  of  manufactur- 
ing plows,  long  carried  on  at  a  village  called  Deer  River,  the 
plows  being  branded  with  the  words  "Deer  River"  and  widely 
known  as  ''Deer  River"  plows.  Plaintiff  then  removed  the 
factory  to  Lowville  in  the  same  county,  continuing  the  old  name 
and  brand  ''Deer  River."  Two  or  three  years  later  defendant,  a 
former  employee,  bought  the  old  factory  building,  representing 
that  he  was  to  use  it  as  a  blacksmith  shop  and  general  repair 
shop.  He  began,  however,  to  make  plows  there  in  imitation  of 
plaintiff's  and  branded  them  as  "Deer  River"  plows  and  placed 
his  own  name  upon  them  and  his  salesmen  represented  the  plows 
to  be  identical  with  that  made  by  the  plaintiff  and  his  predeces- 
sors. It  was  held,  that  the  plaintiff  was  entitled  to  a  preliminary 
injunction  restraining  defendant  from  the  use  of  the  name  "Deer 
River"  on  his  plows. ^^ 

« Canal   Co.   v.    Clark,    80    U.    S.  May  18,  1915;  Phenix  Cheese  Co.  v. 

311-1871;    20    L.   ed.   581;  13   Wall.  Clevelayid  Cream  Cheese  Co.,  U.S.  Cir. 

322.  Ct.    (Northern    Dist.   Ohio,   Eastern 

«°  Phenix  Cheese  Co.  v.  Kirp  el  at.,  Div.),  Feb.  4,  1910. 

App.  Div.  (N.Y.)  March,  1917;  Phenix  "  Gehhie  v.  Still,  82  Hun.  (N.  Y.), 

Cheese  Co.  v.  Kennedy  el  at.,  U.  S.  93-1894;  31  N.  Y.  Supp.  102  (Gen'l 

Dist.  Ct.   (Eastern  Dist.  of  Penna.),  Term,  4th  Dep't). 


Names  of  Natural  Products  217 

In  Siegert  v.  Gandolfi  it  is  stated  that  "if  the  geographical  name 
has  become  a  secondary  designation  indicative  of  the  product  of 
the  particular  manufacturer,  it  is  as  much  entitled  to  protection 
as  any  arbitrary  or  fancy  name  *  *  *  and  the  circumstance 
that  the  manufacturer  may  have  removed  his  place  of  business, 
and  is  making  his  product  in  some  other  place,  is  of  no  more 
consequence  than  it  would  be  if  he  had  adopted  the  fancy  name."^^ 

§  110.  Names  of  Natural  Products.  —  The  same  rules  that 
apply  to  names  of  manufactured  articles  apply  to  the  names  of 
natural  products  which  have  been  rendered  valuable  by  the 
owner's  brains  and  labor,  such  as  names  of  natural  springs.  The 
Wisconsin  court,  on  the  petition  of  the  owners  of  the  "Bethesda 
Mineral  Spring"  enjoined  the  use  of  the  name  "Glenn  Bethesda 
Mineral  Water"  where  the  owners  of  the  latter  made  misleading 
representations  as  to  the  ownership  of  the  spring  of  the  plaintiffs, 
the  defendant's  spring  being  1200  feet  away  from  theirs,  although 
the  two  waters  were  identical  in  their  character.  The  decision 
was  based  on  the  court's  belief  that  "the  rules  laid  down  in  re- 
spect to  an  artificial  or  manufactured  article  are  said  to  apply  to 
the  proprietorship  of  any  peculiar  natural  product  which  a  party 
may  have  acquired  with  the  avails  of  his  industry,  sagacity,  and 
enterprise;  the  owner  or  vendor  of  the  one,  equally  with  the 
owner  or  vendor  of  the  other,  having  a  right  to  the  exclusive  use 
of  his  mark  employed  in  connection  with  sale  of  the  commodity. "''^ 

*^  Siegert  v.  Gandolfi,  149  Fed.  100-  "Angostura"  had  acquired  a  second- 
1906  (C.  C.  A.  2nd  Cir.).  Com-  ary  meaning  and  was  not  open  to 
plainants  were  the  successors  of  the  the  use  of  defendants,  and  these 
original  manufacturer  of  Siegert's  rights  were  not  lost  by  the  removal. 
"Angostura  Bitters,"  with  which  the  *^  Dunbar  v.  Glenn,  42  Wis.  118-35- 
name  "Angostura"  had  long  been  1877.  For  seven  years,  plaintiffs 
identified;  this  name  was  that  of  a  owned  a  mineral  spring  in  village 
city  in  Venezuela  where  the  bitters  of  Waukesha,  generally  called  the 
were  first  made,  though  the  factory  "Bethesda  Mineral  Spring,"  and  sold 
had  long  since  been  transferred  to  its  waters  widely  over  the  country. 
Trinidad.  Defendants  made  bitters  Defendants  began  to  sell  "Glenn- 
of  a  similar  kind  at  Baltimore  and  Bethesda  Mineral  Water"  and  pub- 
sold  them  as  "Angostura  Bitters,"  lished  circulars  giving  misleading  facts 
imitating  at  the  same  time  complain-  as  to  ownership  of  the  Bethesda 
ants'  bottles  and  labels,  but  correctly  Spring.  Defendants  claimed  to  own 
stating  in  the  labels  and  circulars  spring  1,200  feet  from  plaintiffs'  spring 
their  own  name  and  the  place  of  with  water  identical  with  that  of 
manufacture.     Held,   that   the   word  plaintiffs'  spring  in  all  respects.    Held, 


218 


Geographical  Names 


In  Canada,  in  a  case  where  there  was  no  misrepresentation,  a 
case  of  this  sort  was  distinguished  from  the  Stone  Ale  case,  be- 
cause the  water  was  not  a  manufactured  product,  but  a  product 
of  the  soil,  and  the  name  used  applied  to  a  locality  in  which  both 
springs  were  located  and  the  defendant  was  entitled  to  indicate 
in  his  name  the  source  of  his  natural  product.''"  But  in  an 
American  case,'^^  the  use  of  the  name  ''Clysmic"  for  a  spring  was 


it  is  the  rule  that  the  owner  of  a  trade- 
mark has  a  right  to  protection  in  the 
sole  use  of  it.  Citing  Coats  v.  Hol- 
brook,  Nelson  &  Co.,  2  Sandf.  Ch. 
(N.  Y.)  586-1845;  Congress  and 
Empire  Spring  Co.  v.  High  Rock 
Congress  Spring  Co.,  45  N.  Y.  291- 
1871. 

^0  Grand  Hotel  Co.  v.  Wilson,  21 
R.  P.  C.  117-1903.  Plaintiffs  owned 
springs  in  township  of  Caledonia, 
Ontario,  which  spring  water  they 
sold  as  "  Caledonia  Water,"  etc.  One 
defendant  bored  on  land  belonging  to 
another  of  the  defendants,  adjoining 
land  of  plaintiffs,  and  got  water 
similar  to  plaintiff's  and  began  to  sell 
it  as  "Natural  Saline  Water  from  the 
New  Springs  at  Caledonia."  Held  by 
the  Privy  Council  that  there  had  been 
no  imitation  of  get-up  or  marks,  and 
defendant  was  entitled  to  indicate  the 
local  source  of  the  waters  sold  by 
him  and  had  adequately  distinguished 
their  product  from  that  of  plaintiffs. 
Court  made  the  point  that  w^aters 
were  not  manufactured  goods  (hence 
the  Stone  Ale  case  did  not  apply),  that 
the  waters  got  their  properties  from 
the  soil  of  that  locality.  It  was  shown 
also,  that  the  word  "Caledonia"  ap- 
plied not  only  to  plaintiffs'  spring,  but 
also  to  a  spring  two  miles  away,  called 
the  D  Spring.  The  court  admitted 
defendants'  water  was  likely  to  be 
more  profitable  because  of  situation 
of  springs  of  defendant  and  that  tlie 
defendant  was  entitled  to  any  profit 


that  might  come  from  that  fact  in  this 
instance,  but  held  that  defendants 
were  not  proved  to  have  sold  water 
as  "Caledonia  Water"  and  that  the 
use  of  words  "New  Springs"  by  de- 
fendants distinguished  their  goods 
from  plaintiffs'. 

^^Hill  V.  Lockwood,  32  Fed.  389- 
1887  (C.  C.  E.  D.  Wis.).  Plaintiff 
purchased  a  spring  of  mineral  water, 
known  as  the  "Clysmic  Spring." 
Defendant  was  then  selUng  agent  for 
a  certain  territory;  he  had  advertised 
and  developed  the  spring,  and  given 
it  its  name.  Plaintiff,  then,  by  con- 
tract, gave  defendant  the  exclusive 
right  to  sell  the  water  for  twenty 
years.  By  defendant's  efforts,  the 
water  became  widely  known  as  "Clys- 
mic Water."  Afterward,  the  con- 
tract being  still  in  force,  defendant 
purchased  land  adjoining  plaintiff's 
and  opened  a  spring  there,  the  water 
of  which  he  sold  as  "Clysmic  Water." 
The  name  "Clysmic"  had  never  been 
used  in  the  locality  except  with 
reference  to  plaintiff's  spring,  and, 
that  defendant  had  no  right  to  sell 
other  waters  under  the  same  name,  in 
competition  with  those  of  plaintiff's 
spring.  Manhattan  Medicine  Co.  v. 
Woods,  108  U.  S.  218;  Alaska  Pack- 
ers' Assn.  V.  Alaska  Imp.  Co.,  60  Fed. 
103;  Sherwood  v.  Andrews,  5  Am.  L.  R. 
N.  S.  588;  Hegeman  v.  Hegaman,  8 
Daly  (N.  Y.),\;A.B.  Wrisley  Co.  v. 
loim  Soap  Co.,  104  Fed.  548;  Stachel- 
berg  v.  Ponce,  23  Fed.  430;  Hazard  v. 


Names  Indicating  Process  of  Manufacture        219 

enjoined  where  the  name  was  one  which  had  never  been  used  in 
the  locality  where  the  springs  were,  except  by  the  plaintiffs.  In 
other  words,  if  the  name  is  given  to  a  spring  by  one  person,  an- 
other may  not  use  it  although  the  latter's  water  comes  from  the 
same  locality  but  is  not  put  on  the  market  until  after  the  name 
had  been  applied  to  the  place  by  the  plaintiff. 

§  111.  Geographical  Names  Which  Indicate  a  Process  of 
Manufacture. —  Again,  geographical  names  may  indicate  that  the 
goods  so  named  are  made  by  a  particular  process,  or  in  a  manner 
peculiar  to  a  particular  place.  A.  has  long  made  a  certain  prod- 
uct at  X.  in  a  manner  peculiarly  his  own,  which  is  not  patented. 
That  fact  is  one  widely  known,  and  it  comes  about  that  any  of 
that  product  bearing  the  name  X.  will  be  taken  to  have  been 
made  by  him.  ''Stone  Ale"  which  was  made  in  the  town  of 
Stone  in  England,  and  ''Worcester  China"  which  has  for  years 
been  made  at  Worcester,  England,  by  a  few  firms  in  a  particular 
way,  are  illustrations  of  such  names.  For  a  stranger  to  make  ale 
or  china  under  these  names  in  these  places  or  elsewhere  could  not 
but  create  confusion. 

There  is  a  distinction  between  a  geographic  name  which  has 
become  synonymous  with  the  plaintiff's  name  by  association  and 
a  name  which  has  become  synonymous  with  some  process  in  the 
abstract.  The  distinction  is  necessary  because  a  name  merely 
synonymous  with  the  plaintiff's  goods  may  be  protected  by  equity 
for  the  sole  benefit  of  the  plaintiff ;  but  one  which  has  become  the 
name  of  a  process  has  become  an  abstract  word  which  all  may 
use.  This  distinction  is  shown  in  the  case  of  Anheuser-Busch 
Brewing  Assn.  v.  Fred  Miller  Brewing  Co.^"^  Complainants'  pred- 
ecessor had  long  sold  a  beer  of  special  quality,  known  as  "Bud- 
weiser"  beer,  because  originally  made  of  imported  materials 
similar  to  those  used  in  a  brewery  at  Budweis,  in  Bohemia,  and 
by  the  same  process  there  employed.  Defendant  subsequently 
put  on  the  market  a  brand  of  beer  described  as  "Budweiser." 
There  was  no  simulation  in  labels  or  dress.  Held,  that  while 
there  could  be  no  exclusive  right  in  the  geographical  name  "Bud- 

Caswell,  93  N.  Y.  259;  Dixon  Crucible  (Pa.)  42;  Frazier  v.  Doioling,  18  Ky. 

Co.  V.  Guggenheim,  2  Brewst.   (Pa.)  L.  R.  1109. 

321;   Jennings   v.   Johnson,   37   Fed.  ^^  §7  Fed.  864,  Circ.  Ct.  E.  D.  Wis. 

364;  Feder  v.  Benkert,  70  Fed.  613;  1898. 

Fulton    V.    Seller    &    Co.,    4    Brewst. 


220  Geographical  Names 

weiser,"  as  a  trade-mark,  and  while  defendant  might  be  entitled 
to  use  the  name  if  it  truly  denoted  the  process  by  which  it  was 
brewed,  yet,  under  the  evidence,  it  appeared  that  the  name  had 
been  arbitrarily  adopted  by  defendant,  being  in  no  way  descrip- 
tive of  the  process,  and  that  it  had  been  adopted  for  the  purpose 
of  taking  advantage  of  the  reputation  of  complainants'  beer  and 
that  its  use  therefore  constituted  unfair  competition. 

Similarly,  the  name  of  the  town  of  Worcester,  England,  re- 
ferred to  above,  has  become  associated  with  the  china  industry. 
It  has  been  held  that  the  owner  of  the  china  factories  there  had 
the  right  to  enjoin  a  rival  from  using  the  name  for  china  which 
he  manufactured  in  or  near  Worcester.  The  name  had  been  used 
as  a  name  of  the  product  of  three  mills  for  115  years.  That  fact 
gives  to  the  owners  of  these  mills  the  right  to  say  that  Worcester 
china  means  only  china  made  by  them.  On  the  other  hand, 
Worcestershire  sauce  means  sauce  made  by  a  particular  process 
not  associated  with  one  person  only,  but  with  a  place,  and  indi- 
cates that  the  sauce  bearing  the  name  is  the  kind  originally  made 
in  Worcestershire  by  some  one,  the  identity  of  the  maker  having 
been  lost,  or  at  any  rate  disregarded.^^ 

"3  Lea  V.  Deakin,  Fed.  Cas.  8,154-  near  Worcester  making  Worcester 
1879.  Plaintiffs  had  long  made  Wor-  ware.  From  1840  to  1889,  there  were 
cestershire  sauce  in  Worcestershire,  two  china  makers  near  Worcester 
England.  Defendant  lived  in  Wiscon-  making  Worcester  ware.  These  houses 
sin  and  got  from  England  "Improved  were  independent  and  enjoyed  a 
Worcestershire  Sauce"  made  in  Lon-  large  reputation.  The  name  "Wor- 
don  and  put  it  on  the  market.  Held,  cester"  applied  to  china  has  a  second- 
Worcestershire  sauce  had  been  long  ary  meaning  relating  to  china  and  has 
known  in  market  and  is  now  a  generic  had  such  meaning  for  more  than  100 
name,  applied  to  that  species  of  sauce,  years,  aside  from  its  geograpliical 
It  cannot  be  claimed  by  the  plaintiffs  sense,  so  the  court  here  held,  and  never 
simjily  because  they  live  in  Worcester-  has  represented  the  china  of  more  than 
shire  and  they  cannot  have  sole  right  three  contemporaneous  firms,  all  of 
to  use  of  that  term  for  tliat  species  of  which  are  now  united  in  the  plaintiff 
sauce.  by  succession  or  otherwise.    The  plain- 

Worcester     Royal     Porcelain     Co.  tiff    claimed    that    Locke    left    their 

V.  Locke   &   Co.,    19   R.   P.   C.   479-  employ  and,  in  1896,  began  to  make 

1902.     In  1751,  Worcester  Porcelain  "Worcester  China"  which  his  adver- 

was   first  made  in  Worcester,   Eng-  tisements  stated  was  "Manufactured 

land.    From  1780  to  1801,  there  were  by  E.  Locke  &  Co.,  Shrub  Hill  Works, 

two    china    makers    near    Worcester  Worcester,"  and  that  he  made  other 

making  Worcester  ware.     From  1801  goods  marked  only  with  word  "Wor- 

to  1840  there  were  three  china  makers  cester."    Held,  injunction  should  issue 


Names  Indicating  Process  of  Manufacture        221 

In  Birmingham  Vinegar  Brewery  Co.  v.  Powell,^"^  "Yorkshire 
Relish"  had  been  made  by  plaintiffs  from  a  secret  receipt,  during 
many  years,  and  the  name  had  come  to  mean  sauce  made  by  the 
plaintiff  by  their  own  receipt.  Defendants  did  not  discover 
it  but  approximated  it,  and  put  out  their  product  under  the 
same  name,  in  a  similar  bottle  with  a  similar  label.  Proof 
existed  of  actual  deception  of  purchasers.  It  was  held  that,  as 
plaintiffs  had  used  the  name  for  thirty  years,  and  it  was  the  name 
of  a  particular  sauce,  if  anyone  sold  "Yorkshire  Rehsh  "  he  thereby 
alleged  that  he  sold  the  particular  sauce  of  the  plaintiffs.  That 
was  passing  off  goods  as  the  goods  of  another,  for,  since  the  recipe 
for  plaintiffs'  sauce  had  not  been  discovered,  the  two  sauces  could 
not  be  the  same.  The  defendants  thus  were  using  a  name  to 
misrepresent  their  goods  to  be  made  by  the  same  process  as  that 
used  by  the  plaintiffs,  which  was  untrue. 

"Whitstable  Oysters"  was  found  by  the  English  court  to  mean 
a  peculiar  class  of  oysters  fattened  by  the  process  used  near 
Whitstable,  and  that  all  oysters  of  this  name  had  an  appearance 
peculiar  to  themselves.  It  was  decided  that,  unless  the  term 
meant  that  all  Whitstable  oysters  came  from  the  plaintiff's  beds 
at  that  place,  no  injunction  could  issue.  But  as  it  meant  oysters 
of  a  certain  kind,  the  defendant  might  use  it  on  oysters  answering 
these  requirements.^^ 

restraining  from  using  name   "Wor-  George  III  and  was  sole  owner  of  the 

cester"  on  china  "without  clearly  dis-  marine  manor  and  royalty  of  Whit- 

tinguishing  such  goods  from  the  goods  stable  &  Oyster  Fishery  thereon,  and 

of  the  plaintiffs"  (p.  490).    This  ruhng  claimed    especial    quaUties    for    their 

was  made  despite  the  fact  that  no  oysters.     Defendants  began  to  offer 

actual  deception  was  proven.     Held,  for    sale    oysters    not    plaintiff's,    as 

also,  that  the  plaintiffs  were  not  dis-  "Whitstables   &c.    Imperials"   which 

entitled  to  relief  because  other  firms  latter  was  a  name  used  by  plaintiff 

had  made  "Worcester"  china  in  the  to    designate    oysters    imported    by 

past  at  Worcester  or  because  they  had  plaintiff  and  fattened  at  Whitstable. 

described    some    of    their    goods    as  Plaintiff  had  permitted  persons  pur- 

" Royal    Worcester"    and    others    as  chasing  oysters  from  them  to  sell  them 

"Graingers  Worcester  China."  as  Whitstable  oysters  with  the  addi- 

5^  App.    Cas.    1897-710,    66    L.    J.  tion  of  the  seller's  name.    A  company 

(Ch.)    N.    S.    763-1897,    House    of  called  Sea  Salter  Co.  with  beds  near 

Lords.  those  of  plaintiff  had  also  used  the 

^*  Whitstable  Oyster  Fishing  Co.  v.  name  for  a  long  period.    The  defend- 

Hayling  Fisheries,  18  R.  P.  C.  434-  ants  had  used  term  Whitstable  only 

1901.     Plaintiff  was  incorporated  by  on  oysters  bought  from  plaintiff  but 


222  Geographical  Names 

The  Chancellor  of  Oxford  University  had  long  made  bibles  in 
a  certain  style  which  were  called  "Oxford  Bibles."  A  printing 
house  began  to  sell  "Oxford  Bibles,"  although  it  was  not  con- 
nected with  Oxford  in  any  way.  It  was  held  that  the  defendants 
(li'l  not  show  that  the  bibles  had  become  so  associated  with  the 
name  that  "Oxford"  had  come  to  be  the  abstract  name  of  that 
kind  of  a  bible,  but  that  the  defendants'  use  of  the  name  passed 
off  its  goods  as  those  of  the  plaintiff  —  the  name  was  sufficiently 
associated  with  the  plaintiff  for  this.^^ 

A  person  who  puts  on  the  market  goods  purporting  to  be 
made  by  an  unpatented  process  but  are  not  so  made,  is  doing  a 
wrong.  Perhaps  he  cannot  under  all  circumstance  be  sued  by 
one  who  also  is  making  goods  by  this  process,  as  the  latter  has 
no  special  right  to  the  process  in  question.  Such  a  case  is  to  be 
carefully  distinguished  from  one  which  concerns  a  process  in  which 
some  one  dealer  has  acquired  rights  by  the  association  in  the 
minds  of  the  public  of  the  name,  not  with  the  process,  but  with  him 
personally.  Such  association  gives  him  rights  ample  to  secure 
standing  in  equity  to  sue.  In  considering  apparent  violations 
of  rights  in  place  names  which  indicate  process  this  distinction 
is  to  be  kept  in  mind. 

Certain  millers  in  Minneapolis,  Minnesota,  and  their  pred- 
ecessors in  business  have  for  thirty  years  made  flour  by  the 
roller  process,  and  used  as  brands  the  words  "Minneapolis," 
"Minneapolis,  Minnesota,"  "Minnesota,"  "iMinnesota  Patent." 
The  words  "Minnesota"  or  "Minnesota  Patent"  mean  that 
the  flour  is  made  under  the  roller  patent  process  somewhere  in 
Minnesota.  These  words  signify  to  the  trade  that  the  flour  was 
made  at  a  Minneapolis  flouring  mill.  A  dealer  in  Chicago,  111., 
obtains  from  mills  at  INIilwaukee,  Wis.,  an  inferior  grade  of  flour, 
which  he  labels  "Best  Minnesota  Patent,  INIinneapolis,  Minn.," 
and  advertises  it  as  made  at  Minneapolis,  Minn.,  with  the  result 

now  claimed  right  to  use  name  on  other  answering  this  description  were  pro- 
oysters.  Held  it  was  found  below,  tliat  duccd  by  defendants  and  might  be 
the  term  Whitstable  meant  a  peculiar  called  Whitstable;  that  the  plaintiff 
class  of  oyster  which  must  answer  the  had  not  established  that  the  public 
requirements  of  the  trade  as  to  ap-  understood  Whitstable  oysters  were 
p>earance  and  also  that  it  was  a  gco-  oysters  from  their  beds  and  no  other, 
graphical  term  in  the  sense  that  it  ^  Chancellor,  etc.,  University  of  Ox- 
must  have  a  connection,  more  or  ford  v.  Wilmore-Andrews  Pub.  Co.,  101 
less,   with   Whitstable;    that   oysters  Fed.  443-1900  (C.  Ct.  S.  D.  N.  Y.). 


Geographic  Names  Arbitrarily  Adopted  223 

that  the  pubUc  is  deceived  into  buying  this  flour  under  the  behef 
that  it  is  made  in  MinneapoHs,  and  is  defrauded,  and  the  business 
of  the  MinneapoHs  millers  is  damaged.  Held,  that  a  court  of 
equity  may  grant  relief  by  prohibiting  the  fraud  and  preventing 
damage  to  the  business  of  the  IVIinneapolis  millers. ^^ 

Complainant  was  a  well-known  maker  of  watches  at  Elgin. 
Defendants,  wholesale  dealers  in  jewelry  and  watches,  doing 
business  in  Iowa,  adopted  the  name  ''Elgin  Jewelry  Company" 
and  stated  Elgin  to  be  their  place  of  business.  They  rented  a 
small  room  at  Elgin  and  had  a  clerk  there  who  merely  received 
and  answered  or  forwarded  correspondence.  There  were  also 
actual  misrepresentations  by  salesmen.  Held  unfair  compe- 
tition.^^ 

§  112.  Geographic  Names  May  be  Arbitrarily  Adopted  as 
Trade  Names.  —  The  uses  of  geographical  names  so  far  noticed 
arise  naturally  from  association  of  goods  and  places.  There 
is  also  an  arbitrary  use  of  geographical  names.  By  this  term 
is  meant  attaching  to  goods  a  geographical  name  which  has 
utterly  no  connection  or  association  with  the  goods,  as  for 
instance  the  use  of  the  name  ''Vienna  Bread"  by  Fleischmann, 
a  baker  in  New  York.  "Boston  Stores"  and  "New  York  Stores" 
are  found  in  many  cities  outside  of  Boston  and  New  York.  These 
names  are  used  arbitrarily,  when  the  shops  to  which  they  are 
applied  have  no  connection  with  the  city  for  which  they  are 
named.  This  does  not  mean,  however,  that  the  shopkeeper  is 
to  be  held  to  have  misrepresented  his  business  by  using  them. 
It  is  not  fraudulent  misrepresentation  to  call  a  store  in  Baltimore, 
a  'Boston  Store."  It  is  merely  an  arbitrary  use  of  the  geo- 
graphical name  Boston. 

Because  Fleischmann  lived  in  New  York,  instead  of  Vienna, 
was  no  reason  for  prohibiting  him  from  using  "Vienna,"  as  a 
name  of  his  particular  kind  of  bread.  No  one  was  deceived  by 
his  so  using  the  word,  because  everyone  knows  the  bread  is  made 
here;  but  were  it  a  fact  that  fresh  bread  could  be  imported  from 
Vienna  and  sold  in  New  York,  it  would  then  be  unfair  trade  for 
him  to  sell  bread  made  in  New  York,  in  competition  with  the 

"  Pillshury-Washburn  Flour  Mills  41  L.  R.  A.  162,  reversing  82  Fed.  816- 
Co.,  Ltd.,  et  al.  v.  Eagle  (C.  C.  A.      1897. 

7th  Cir.,  April  5,  1898),  86  Fed.  608;  ^s  Elgin   Nat.    Watch   Co.    v.   Love- 

latid,  132  Fed.  41-1904  (C.  C.  la.). 


224 


Geographical  Names 


bread  imported  from  Vienna  under  the  name  "Vienna  Bread." 
In  the  first  instance  the  name  is  used  arbitrarily,  in  the  latter 
descriptively.^'-'  "To  say  that  a  geographical  name  can  never 
be  used  in  a  proprietary  right  as  a  trade-mark  states  the  rule 
far  too  broadly.  *  *  *  Had  he  (the  plaintiff)  called  his 
establishment  the  'Chimborazo  Dental  Rooms'  no  inteUigent 
person  would  be  likely  to  associate  the  designation  with  a  moun- 
tain in  South  America.  *  *  *  We  think  the  petition  shows 
a  proprietary  right  in  the  title,  'New  York,'  as  descriptive  of 
his  professional  abode."  ^^  Such  a  name  is  used  not  to  indicate 
a  particular  locality  connected  with  a  business,  but  as  a  fancy 
designation,  to  distinguish  the  factory  or  business  or  the  persons 
engaged  in  it  from  all  others  identified  with  the  same  sort  of 
business.  It  is  not  to  be  understood  from  a  name  so  used  that 
the  business  is  done  in  the  city  or  state  bearing  the  name  used 
or  that  either  of  those  geographical  divisions  is  in  any  way  con- 
nected with  it.    It  would  show  at  most  only  how  the  proprietor 


*'  Fleischmann  v.  Schuckmann,  62 
How.  Pr.  92-1881.  Plaintiff  made 
bread  under  name  "Fleischmann, 
Vienna  Model  Bakery,  Broadway  & 
Tenth  Street,  New  York,  New  York, 
Patent  applied  for."  Later  defend- 
ant sold  loaves  of  bread  similar  in 
form  to  plaintiff's  with  label  Schuck- 
mann's  Genuine  Vienna  Bakery,  154 
E.  54th  Street,  New  York.  At  Cen- 
tennial in  1876,  G.  F.  &  Co.,  under 
management  of  plaintiffs,  first  used 
word  "Vienna"  for  baked  bread.  At 
close  of  Centennial  plaintiff  pur- 
chased right  to  use  this  word.  Held, 
Vienna  bread  was  different  from  other 
kinds.  Defendant's  label  is  similar 
to  plaintiff's  and  an  imitation  of  it. 
No  complaint  is  made  of  quality  of 
defendant's  bread,  but  this  is  not 
material.  Plaintiff  is  an  Austrian 
from  Vienna,  living  here.  He  had  a 
right  to  call  his  bread,  by  way  of  dis- 
tinction, Vienna  bread.  No  deception 
is  practiced  as  everyone  knows  the 
bread  is  made  here,  citing  "Bismark 


collars"  {Messerole  v.  Ttjnberg,  4  Abb. 
Pr.  N.  S.  410-1868). 

80  Sanders  v.  Utt,  16  Mo.  App.  322- 
1884.  Plaintiff  was  a  dentist  in  St. 
Louis,  who  had  for  twelve  years  put 
over  the  entrance  to  his  office  the 
words,  "New  York  Dental  Rooms." 
The  defendant  carried  on  business 
about  nine  blocks  from  the  plaintiff, 
and  adopted  a  sign  similar  in  ap- 
pearance to  that  of  the  plaintiff,  bear- 
ing the  words  "New  York  Steam  Den- 
tal Company."  In  other  ways  also  he 
employed  the  same  words  in  adver- 
tising his  business.  Held  that,  strictly 
speaking,  this  is  not  a  controversy 
about  a  trade-mark,  but  rather  con- 
cerning the  good-will  of  the  plaintiff's 
business.  "To  say  that  a  geographical 
name  can  never  be  used  in  proprictarj'^ 
right  as  a  trade-mark  states  the  rule 
far  too  broadly.  When  such  a  name 
is  employed  in  connection  with  the 
place  of  manufacture  or  production, 
no  person  manufacturing  or  producing 
at  tlmt  place  can  monopolize  it  against 


Geographic  Names  Arbitrarily  Adopted 


225 


had  found  a  fancy  name  to  distinguish  his  place  of  business  from 
others  of  hke  character.^^ 


other  persons  manufacturing  or  pro- 
ducing at  the  same  place"  (p.  325). 
Citing  Brooklyn  White  Lead  Co.  v. 
Masury,  25  Barb.  416-1857;  Neivman 
V.  Alvord,  49  Barb.  588-1867. 

80^  Phenix  Cheese  Co.  v.  Samuel  Kirp 
and  Morris  Pearl,  App.  Div.  (N.  Y., 
First  Department)  March,  1917. 
Plaintiff  was  a  manufacturer  of  cheese 
in  New  York,  and  had  sold  his  product 
for  over  35  years  under  the  name 
"Philadelphia  Cream  Cheese,  when 
the  defendant  began  the  manufacture 
and  sale  of  cheese  under  the  name 
"Pennsylvania  Cream  Cheese."  De- 
fendants' product  was  not  manufac- 
tured in  Pennsylvania.  Held,  that  the 
plaintiff  was  entitled  to  a  preliminary 
injunction  restraining  the  defendant 
from  using  the  name.  The  Court 
said  — 

"Even  if  the  word  'Pennsylvania' 
was  simply  a  name  that  occurred  to 
one  of  the  defendants,  as  his  affidavit 
states,  the  defendants  were  acting 
entirely  in  good  faith,  and  had  no  in- 
tent to  deceive  the  purchasing  public, 
the  fact  remains  that  defendant's 
label  and  their  use  of  the  word  '  Penn- 
sylvania' would  probably  mislead  the 
average  purchaser,  and  plaintiff  is 
entitled  to  have  it  restrained." 

Phenix  Cheese  Co.  v.  Kennedy  et  al., 
District  Court  of  the  United  States  for 
the  Eastern  District  of  Pennsylvania, 
May  18,  1915.  Action  for  unfair 
competition.  The  defendants  used 
the  word  "Philadelphia"  in  connec- 
tion with  cream  cheese  made  in  Phil- 
adelphia, and  sold  the  same  in  viola- 
tion of  the  plaintiff's  exclusive  right 
to  the  use  of  that  name.  The  plaintiff 
and  his  predecessors  since  1880  had 
sold  cream  cheese,  manufactured  in 


New  York,  under  the  name  "Phil- 
adelphia Cream  Cheese."  The  de- 
fendants, who  had  been  cheese  dealers 
in  Philadelphia  for  many  years,  in  1907 
adopted  the  word  "Philadelphia"  in 
connection  with  the  sale  of  their 
cheese.  The  court  held  the  plaintiff 
entitled  to  an  injunction,  saying: 

"The  geographical  name  'Phil- 
adelphia' having  no  peculiar  signif- 
icance attached  to  it  by  the  superior 
quality  of  Cream  Cheese  derived  from 
Philadelphia  territory  has  become  a 
name  indicative  of  the  cheese  made  by 
the  plaintiff,  and  its  use  antedates  any 
use  of  the  word  'Philadelphia'  by  the 
defendants  upon  their  labels.  If  the 
word  'Philadelphia'  had  been  con- 
nected in  the  trade  with  the  defend- 
ants' output,  or  with  any  peculiar 
style  of  quality  of  cheese  made  in  or 
about  Philadelphia,  the  plaintiff  would 
not  be  allowed  to  adopt  the  name  in 
prejudice  of  the  right  of  the  defendants 
to  designate  by  geographical  designa- 
tion the  locality  in  which  their  product 
is  produced,  but  such  is  not  the  case 
here.  Whether  or  not  the  defendants' 
intent  has  been  to  obtain  an  unfair 
and  fraudulent  share  of  the  plaintiff's 
business,  the  effect  of  its  action  is  such 
as  to  produce  confusion  in  the  minds 
of  the  public  and  the  trade  and  con- 
sequent loss  to  the  plaintiff,  against 
which  it  should  be  protected  in 
equity." 

Phenix  Cheese  Company  v.  Cleveland 
Cream  Cheese  Company,  Circuit  Court 
of  the  United  States,  Northern  Dis- 
trict of  Ohio,  Eastern  Division,  Feb- 
ruary 4,  1910.  Application  by  com- 
plainant for  a  temporary  injunction 
restraining  the  defendants  from  using 
the  name  "Philadelphia"  in  connec- 


226  Geographical  Names 

§  113.  Use  of  Geographic  Names  as  Trade-Marks  must  be 
Truthful.  —  Place  names  arc  governed  by  the  same  rules  as  other 
trade  names.  Care  nmst  be  taken  to  prevent  fraud  and  deceit 
arising  from  the  fact  that  they  have  a  meaning  usually  far  better 
known  and  understood  than  that  which  they  have  acquired 
from  association  with  the  goods  of  some  individual.  The  ques- 
tion is  not  so  much  what  is  the  exact  character  of  the  rights  one 
acquires  in  a  name  so  used,  but  rather  is  he  using  it  in  a  deceptive, 
misleading  way,  so  as  to  attract  trade  away  from  another  user  of 
the  name.  In  Van  Horn,  Ltd.,  v.  Coogan,'^^  Amos  Van  Horn  and 
his  company  sold  the  "Portland"  cook  stove  which  was  made 
for  him  alone  and  sold  only  by  him,  and  became  well  known  in 
and  near  Newark,  N.  J.,  under  that  name.  Defendant  was  a 
rival  of  complainant  with  a  store  a  few  doors  away.  The  defend- 
ant began  to  sell  a  stove  which  had  been  known  as  "Columbian 
Dandy"  as  the  "Portland."  It  was  a  similar  stove  to  the  "  Port- 
land "  stove  of  plaintiff.  Defendant  undersold  complainant  and 
put  out  a  sign  reading  "Famous  Portland,"  "Famous  Portland 
Range,  reduced,  has  no  equal."  It  was  held  that  the  question 
was  not  "Whether  the  complainant  has  a  property  in  the  name 
by  which  his  goods  are  distinguished  in  the  market,  but  *  *  * 
has  the  defendant  a  right  to  use  the  name  by  which  the  com- 
plainant's goods  are  known,  for  the  purposes  of  deception,  and 

tion  with  cream  cheese  manufactured  cheese  or  the  expression  '  Philadelphia 

by  the  defendants.    Complainants  for  Cream  Cheese,'  notwithstanding  the 

about   30   years   were   the   exclusive  facts  as  I  have  just  stated;  and  the 

manufacturers  of  cream  cheese  labeled  position  is  taken  on  the  authority  of 

"  Philadelphia  Cream  Cheese."  that  Une  of  cases  which  hold  that  a 

The  court  said  in  granting  a  tem-  mere  geographical  name  or  word  is 

porary  injunction  —  not  the  subject  of  a  trade-mark.    That 

"The  name  'Phiiadelpliia'  as  ap-  is  true  in  a  narrow  sense,   but  the 

plied  to  cream  cheese,  was  selected  Supreme  Court  of  the  United  States, 

arbitrarily    some    thirty    years    ago,  in  the  case  of  Elgin  National  Watch 

solely  for  the  purpose  of  distinguishing  Co.  v.  Illinois  Watch  Co.,  179  U.  S. 

select  cheese  made  by  the  person  who  665,  and  French  Republic  v.  Saratoga 

selected  that  name  from  cream  cheese  Vichij  Spring  Co.,  191  U.  S.  427,  as 

made   by   other   manufacturers,   and  well  as  by  other  decisions,  has,  as  it 

so  the  name  has  continually  been  used  seems  to  me,  laid  down  the  rule  which 

ever  since.    *    *    *  establishes  the  right  of  the  complain- 

"The  defendants  assert  that  they  ant,  on  the  papers  before  me,  to  the 

have  a  right  to  use  the  inscription  relief  which  it  seeks." 

'Philadelphia,'   as   appUed   to   cream  "  52  N.  J.  Eq.  380-1894;  28  Atl.  788. 


Use  of  Names  Must  Be  Truthful 


227 


in  order  to  attract  to  himself  that  custom  which,  without  the 
improper  use  of  such  name,  would  have  flowed  to  the  complain- 
ant? And  the  answer  to  the  inquiry  is  that  the  defendant  has 
no  such  right."  ^^ 
The  use  of  a  geographical  name  in  this  arbitrary  way  spoken 
°2  Citing  Coats  v.   Merrick   Thread     under    the    name    of    "Philadelphia 


Co.,  149  U.  S.  562-1S93;  37  L.  ed. 
847;  13  Sup.  Ct.  966;  Lawrence  Mfg. 
Co.  V.  Tennessee  Mfg.  Co.,  138  U.  S. 
537-1891;  34  L.  ed.  997;  11  Sup.  Ct. 
396;  Putnam  Nail  Co.  v.  Bennett,  43 
Fed.  800-1890.  See  also  Re  Green,  8 
Pat.  Off.  Gaz.  729-1875;  "German 
Sirup"  made  in  United  States;  Re 
Cornwall,  12  Pat.  Off.  Gaz.  312-1877; 
"DubUn"  soap  made  in  United  States; 
Hirst  V.  Denham,  L.  R.  14  Eq.  Cas. 
542-1872;  "Liverpool"  hair  cloth 
made  at  Huddersfield.  Weyma7i  v. 
Soderberg,  108  Fed.  63-1901  (Circ.  Ct. 
W.  D.  Wis.).  Complainant,  a  Pitts- 
burg manufacturer  of  snuff,  used 
name  "Copenhagen"  as  a  trade-mark, 
not  to  indicate  that  it  was  imported, 
but  to  attract  Scandinavian  trade. 
Defendants,  retail  dealers,  sold  snuff, 
made  in  Chicago,  and  put  up  in  jars 
labeled  "Kjobenhavn  Snus."  There 
were  marked  differences  between  the 
jars  and  labels  of  the  two  parties. 
Held,  no  unfair  competition.  Col- 
gate v.  Adams,  88  Fed.  899-1898  (C. 
C.  N.  D.  111.).  Complainants  had 
long  made  and  sold  a  well-known 
toilet  soap  called  "Cashmere  Bou- 
quet," and  generally  designated  in 
the  trade  as  "Cashmere  Soap."  De- 
fendants then  put  on  the  market  a 
soap  stamped  "Cashmere"  and  desig- 
nated upon  the  boxes  "Violets  of 
Cashmere."  Held,  unfair  competition. 
International  Cheese  Co.  v.  Phenix 
Cheese  Co.,  118  App.  Div.  (N.  Y.)  499- 
1907;  103  N.  Y.  Supp.  362  (3d  Dep't). 
Defendant  and  its  predecessors  had 
since  1880  made  and  sold  cream  cheese 


name 

Cream  Cheese"  although  the  cheese 
does  not  appear  to  have  been  made  at 
Philadelphia,  nor  to  have  differed  in 
composition  from  cream  cheese  of 
other  brands.  No  other  manufactu- 
rers, except  two  or  three  who  had 
been  compelled  to  abandon  its  use, 
had  used  this  name,  but  in  trade 
journals  and  restaurant  bills  of  fare  the 
term  "Philadelphia  Cream  Cheese" 
was  often  applied  to  cream  cheese  in 
general.  Plaintiff  then  began  to  sell 
part  of  its  product  as  "Philadelphia 
Cream  Cheese."  Held,  that  defendant 
was  exclusively  entitled  to  use  this 
trade  name;  also,  that  the  right  so  to 
use  the  name  was  unaffected  by  the 
fact  that  a  distinctive  trade-mark  was 
applied  by  defendant  to  all  its  prod- 
ucts, including  this  brand  of  cheese. 

See  also  Phenix  Cheese  Co.  v.  Kirh, 
App.  Div.  (N.  Y.)  March,  1917;  Phe- 
nix Cheese  Co.  v.  Cleveland  Cream 
Cheese  Co.,  U.  S.  Cii'.  Ct.  (Northern 
Dist.  of  Ohio,  Eastern  Div.)  Febru- 
ary 4,  1910;  Phenix  Cheese  Co.  v.  Ken- 
nedy et  al.,  U.  S.  Dist.  Ct.  (Eastern 
Dist.  of  Penn'a)  May  18,  1915.  It  was 
contended  in  Amoskeag  Mfg.  Co.  v. 
Garner,  54  How.  Pr.  297-1876,  that 
the  plaintiff's  claim  was  a  monopoly 
of  the  word  "Amoskeag,"  which  was 
a  geographical  name.  Defendant  ap- 
pUed  the  word  in  a  way  to  injure  the 
reputation  of  the  plaintiff's  highest 
class  goods  to  which  alone  it  was 
applied  by  them.  The  defendant  was 
enjoined  from  the  use  of  it  on  goods 
inferior  to  those  on  which  plaintiff 
used  the  word. 


228  Geographical  Names 

of  above,  as  in  the  case  of  the  Boston  Store  in  Baltimore,  is  usu- 
ally allowed  without  restriction;  but  it  may  not  be  used  in  Boston 
in  such  a  way  as  to  injure  any  business  there.  One  who  made 
"Chicago  Waists"  elsewhere  than  hi  Chicago,  and  so  injured  the 
business  of  the  plaintiff  who  was  making  "Chicago  Waists"  in 
Chicago,  was  enjoined.  Those  in  a  certain  section,  interested  in 
an  industry  located  there,  and  no  others,  are  entitled  to  the  use 
of  the  name  of  the  locality,  if  its  use  by  persons  outside  that  sec- 
tion actually  does  injure  the  trade  of  those  living  in  the  section 
or  will  tend  to  injure  it.'^^ 

§  114.  Geographical  Names  Which  Indicate  Quality  as 
well  as  origin  or  source.  —  Names  like  "Sea  Island  Cotton," 
"Hungarian  Grass,"  "California  Sherry,"  "Connecticut  To- 
bacco, "  "  Kentucky  Hemp  "  or  "  Virginia  Tobacco ' '  denote  the  qual- 
ity of  the  products  more  or  less  accurately.  This  may  also  be  true 
of  a  manufactured  article.  Again  where  a  manufacturer  has  given 
an  article  a  geographical  name,  which  he  was  the  first  to  use  in  con- 
nection with  it,  it  may,  from  long  use  in  such  connection,  acquire 
a  secondary  meaning,  and  come  to  mean,  not  the  place  where  it 
is  made  but  an  article  made  according  to  his  method,  or 
that  it  possesses  some  particular  quality  or  character.  In 
Metcalfe  v.  Brand,^^  it  was  shown  that  in  1810,  B.  made  mustard 
at  Lexington  which  became  commonly  known  as  "Lexington 
Mustard."  In  1841,  B.'s  wife  succeeded  to  the  business  and  then 
sold  it  to  her  son  ]\IcC.  who  changed  the  label  to  "Burrowe's 
Mustard,  Lexington,  Ky."  In  1869,  he  sold  to  Yates  &  Dudley, 
who  used  label  "Yates &  Dudley,  successors  to  S.  D.  McCullough, 
sole  manufacturers  of  Burrowe's  Mustard,  Lexington,  Ky."  In 
July,  1877,  they  sold  to  John  H.  Brand.  In  August,  1877,  Brand 
moved  business  to  Louisville,  Ky.  In  1873,  Metcalfe  began  to 
make  nmstard  at  Lexington,  and  hi  1877  he  copied  the  can  and 
label  of  Brand  and  moved  into  building  vacated  by  him.  An  in- 
junction was  granted  against  the  use  of  the  name  "Lexington," 

"  Gage-Dovims    Co.    v.    Featherhone  another  who  makes  similar  waists  in 

Corset  Co.,  83  Fed.  213-1897  (Head-  a  different  state  and  city,  and  sells 

note).      "One   making   corset   waists  them  as  'Chicago  Waists'  with  the 

at    Chicago,    and    selling    them    as  manifest   intent   of   availing   himself 

'Chicago  Waists,'  so  that  this  desig-  of   the   reputation   acquired    by    the 

nation   has   come   to   denote   among  other's  goods." 

purchasers  the  goods  made  by  him,  «"  86  Ky.  331-1887;  5  S.  W.  773. 

is  entitled  to  an  injunction  against 


Names  Which  Indicate  Quality  229 

because  that  name  had  come  to  mean  the  mustard  made  by  the 
process  long  used  by  the  original  maker.  It  had  acquired  a  rep- 
utation, and  it  was  doubtless  a  reputation  based  on  quality  and 
not  on  its  historic  connection  with  the  original  maker. 

Most  of  the  cases  already  mentioned  —  referring  to  geograph- 
ical names  which  have  become  associated  with  some  manufac- 
turer or  plant,  and  which,  through  this  association,  are  now 
synonymous  with  the  names  of  these  persons  or  factories  — •  have 
come  to  stand  for  some  quality  or  grade  of  goods.  In  a  sense, 
therefore,  all  cases  of  secondary  use  of  geographical  names  deal 
with  quality.  The  rule  still  in  force  in  such  cases  was  laid  down 
in  1872  in  Newman  v.  Alvord.^'''  The  plaintiffs  used  the  word 
''Akron"  in  designating  a  cement  made  by  them  near  the  village 
of  Akron,  in  Erie  county.  State  of  New  York.  This  word  had 
been  used  by  the  plaintiffs  and  their  predecessors  in  business  about 
thirteen  years,  to  designate  the  original  quality  of  their  cement. 
The  defendants,  who  manufactured  cement  in  Onondaga  county, 
near  Syracuse,  knowing  that  the  plaintiffs  had  for  years  used  the 
word  "Akron"  as  a  trade-mark  to  designate  the  origin  and  place 
of  manufacturing  their  cement,  called  their  product  "Akron  Ce- 
ment." The  plaintiffs'  barrels  were  labeled  as  follows:  "New- 
man's Akron  Cement  Co.,  manufactured  at  Akron,  N.  Y.  The 
hydraulic  cement  known  as  the  Akron  Water  Lime."  The  de- 
fendants labeled  their  baiTels:  'Alvord's  Onondoga  Akron  Ce- 
ment or  Water  Lime,  manufactured  at  SjTacuse,  N.  Y."  They 
placed  the  word  "Akron"  upon  their  label  for  precisely  the  same 
reason  that  the  defendant  in  the  flour  case  ^^  placed  the  words 
"Minnesota  Patent,  Minneapolis,  Minn.,"  upon  his  flour  sacks 
and  barrels,  to  increase  their  sales,  and  avail  themselves  of  the 
reputation  acquired  by  plaintiffs'  cement.  "The  label,"  said 
Earl,  C,  "was  calculated  to  induce  ordinary  buyers  to  believe 
that  they  were  purchasing  either  plaintiffs'  cement,  or  cement  of 
the  same  kind  and  value."  The  sole  question  to  be  determined 
was  held  to  be  whether  the  plaintiffs,  who  were  the  only  persons 
engaged  in  manufacturing  and  selling  the  real  Akron  Cement, 
which  was  known  and  had  a  reputation  in  the  market  as  such, 
could  be  protected  in  the  use  of  the  word  "Akron"  against  the 
defendants,  who  used  it  to  defraud  the  plaintiffs  and  deceive  the 

«5  51  N.  Y.  1S9.  Co.  V.  Eagk,  86  Fed.  608-1898;  infra, 

««  Pillsbury-Washburn    Flour    Mills      41  L.  R.  A.  608- 


230  Geographical  Names 

public.  The  plaintiffs  had  given  a  reputation  to  Akron  ce- 
ment in  the  market.  They  had  always  been  its  principal  manu- 
facturers and  sellers,  and,  at  the  time  of  the  commencement  of  the 
suit,  were  the  sole  parties  who  could  be  injured  by  the  fraudulent 
use  of  the  trade-mark  by  the  defendants;  and  hence  they  were 
clearly  entitled  to  the  protection  which  they  sought.^"^" 

The  name  "Sea  Island  Cotton"  means  cotton  of  a  certain  grade 
desirable  for  certain  known  purposes.  If  poor  or  low  grade  cotton 
is  marked  and  sold  as  "Sea  Island"  the  reputation  of  the  article 
itself  as  well  as  the  trade  of  dealers  in  it  may  suffer.  It  is  in  the 
interest  of  honest  commerce,  honest  branding  of  goods  that  all 
such  misrepresentation  be  stopped.  The  same  may  be  said  of 
manufactured  goods.  It  was  held  as  to  the  owners  of  a  brand  of 
ale  called  "The  Bull  Dog  BottHng,"  ^^  that  if  a  brand  has  any 
reputation  for  quality  its  owner  has  a  right  to  such  protection  as 
will  prevent  that  reputation  from  being  injured  by  the  sale  of  in- 
ferior goods  under  that  brand. 

§  115.  Secondary  Meaning  of  Semi-Geographic  Name.  — 
"Orient"  has  been  held  to  be  a  geographical  name  within  the 
meaning  of  section  5,  Trade-mark  Act  of  1905,  which  forbids 
use  of  "merely  a  geographical  name."  ^^  "Oriental;"  ^^  "Con- 
tinental;" ^^  "International"  ^^  have  been  held  geographic  names. 
"Keystone,"  "Granite  State,"  "Empire  State,"  "Hoosier," 
which  are  nicknames  semi-geographical  in  meaning  may,   by 

^^  Newman  v.  Alvord,  51  N.  Y.  189.  junction  against  the  use  of  the  ter- 

^^  Read   Brothers   v.   Richardson   &  rier's  head  by  defendant  on  bottles 

Co.,  45   L.   T.   N.   S.   54-1881    (Ct.  exported  to  the  colonies.     The  rule 

App.).      Plaintiffs    were    bottlers    of  was  applied  that  a  rival  trader  should 

ales   and   stouts   for   export.     Their  not  be  permitted  to  use  a  mark  that 

label  bore  a  bull  dog's  head  on  a  black  would  tend  to  give  his  goods  the  same 

ground    within    a    circular    band    on  name  in  the  market  as  those  of  his 

which  were  the  words  "Read  Broth-  rival. 

ers,  London.    The  Bull  Dog  Bottling."  ^  Re    Crescent    T7jpeuriter    Supply 

Their   goods   were   commonly   called  Co.,    30   App.     Cas.    (D.    C.)    324- 

" Dog's  Head"  in  the  colonies.     De-  1908. 

fondants   also   bottled   and   exported  "^  In    re    Hopkins,    29   App.    Cas. 

ales  and  stouts  with  a  label  bearing  a  (D.  C.)  118-1907. 

terrier's  head  on  a  black  ground  within  "  Continental    Ins.    Co.    v.    Con- 

a  circular  band  the  words  on  which  tinental  Fire  Assn.,  41  C.  C.  A.  326; 

were    "Celebrated    Terrier    Bottling,  101  Fed.  255. 

E.  Richardson."    Held,  that  phiintilTs  "'  Kochlcr   v.   Sanders,    122   N.   Y. 

were   entitled    to    a    preliminarj'    in-  G5;  4  L.  R.  A.  576;  25  N.  E.  235. 


Secondary  Meaning  of  Semi-Geographic  Names     23  i 


usage,  acquire  a  secondary  meaning,  as  connected  with  a  par- 
ticular brand  or  make  of  goods;  and  when  so  used  will  be  pro- 
tected against  use  in  a  similar  sense  by  rivals.  It  is  not  material 
that  the  plaintiff  had  no  special  right  to  use  the  name  at  the  time 
he  adopted  it.'^- 

A  steamship  agent  may  acquire  a  secondary  meaning  in  the 
name  he  uses  for  a  number  of  lines  represented  by  him  and  this 
against  the  owner  of  one  of  the  lines.^^    Kekewich,  J.,  in  Wurm  v. 


^^  Cohen  v.  Nagle,  190  Mass.  4- 
1906;  76  N.  E.  276;  2  L.  R.  A.  964. 
Cohen  made  "Keystone  Cigars,"  be- 
ginning in  1885,  thinking  it  a  name 
never  used  before  on  cigars.  He 
built  up  a  large  trade  in  New  Eng- 
land — 1160,000  per  year.  Defend- 
ant, in  1905,  began  to  sell  "Keystone 
Maid"  cigars.  Confusion  with  plain- 
tiff's goods  resulted.  Held:  "The 
trade  and  public  in  New  England 
have  come  to  associate  the  word 
'Ke3^stone'  with  the  plaintiff's  cigars 
and  to  recognize  it  as  meaning  his 
cigars  and  not  those  of  any  other  per- 
son" (p.  7):  and  that,  the  fact  that 
word  "Keystone"  has  been  spasmod- 
ically used  on  cigars  did  not  defeat 
plaintiff's  right.  (See  form  of  de- 
cree, pp.  12-13.)  "The  fact  that  the 
word  "Keystone"  was  a  geographical 
name  and  in  common  use  as  a  cigar 
label  since  1870,  prevented  his  (plain- 
tiff) adopting  it  as  his  distinctive 
mark  for  cigars  of  his  manufacture. 
It  did  not  prevent  those  words  from 
acquiring  in  time  a  secondary  or  trade 
meaning,  to  wit,  cigars  made  by  the 
plaintiff"  (p.  18). 

Julian  V.  Hoosier  Drill  Co.,  78 
Ind.  408-1881.  A  geographical  nick- 
name, such  as  "Hoosier,"  may  be 
applied  to  a  specific  article,  such 
as  a  grain  drill,  and  an  exclusive 
right  may  be  acquired  to  use  it 
as  a  trade-mark  or  trade  name  for 
the  article.    "The  thing,  and  the  onlj^ 


thing,  that  is  material  in  case  of  a 
trade  name  is  this:  Does  that  name  in 
the  trade  mean  that  goods  to  which 
it  is  attached  are  goods  of  the  plain- 
tiff's manufacture?  If  it  does,  a  case  of 
trade  name  is  made  out,  although  the 
plaintiff  had  no  right  to  adopt  it  as  his 
mark  when  he  did  adopt  it  as  such,  or 
having  been  the  first  to  adopt  it,  and 
without  regard  to  how  many  others 
are  then  using  it."  Buzby  v.  Davis, 
150  Fed.  275-1906  (C.  C.  A.  8th  dr.). 
Complainant  had  for  many  years  made 
and  sold  at  Philadelphia  oils  and 
lubricants  under  the  name  "Keystone 
Lubricating  Company."  The  symbol 
of  the  keystone  of  an  arch  was  placed 
upon  the  packages  as  a  trade-mark, 
and  the  products  were  widely  known 
by  the  name  "Keystone."  Defend- 
ants began  to  put  upon  the  market 
inferior  oils,  placing  upon  the  pack- 
ages a  similar  keystone  symbol,  to- 
gether with  the  trade  name  adopted 
by  them,  "Keystone  Oil  Company," 
with  the  result  of  misleading  pur- 
chasers. Held,  on  demurrer,  that 
even  if  "Keystone"  were  to  be  taken 
as  a  geographical  term,  unfair  com- 
petition was  shown. 

"  Winsor  v.  Clyde,  9  Phila.  513- 
1872  (Ct.  Com.  PI.  Phila.)  Plain- 
tiffs were  agents  at  Philadelphia  for 
several  lines  of  steamers,  but  did  not 
own  the  vessels.  They  had  long  desig- 
nated and  long  advertised  most  of 
these    hues    of    steamers    as    "Key- 


232 


Geographical  Names 


Webster,""^  doubted  if  one  could  acquire  a  secondary  meaning  in 
the  name  "White  Hungarian  Band,"  because  the  public  usually 
knew  the  band  by  the  name  of  the  leader  —  or  partially  by  that 
name. 


stone"  lines.  Held,  that  they  had  ac- 
quired a  property  right  in  the  use 
of  the  name,  which  would  be  pro- 
tected by  injunction,  as  against  the 
owners  of  one  of  these  hnes,  who, 
after  withdrawing  it  from  the  plain- 
tiffs, advertised  it  as  the  "Keystone" 


line.  It  appeared  that  this  particular 
line,  while  managed  by  plaintiffs,  had 
generally  been  known  simply  as  the 
"Philadelphia  and  Providence  Line" 
rather  than  by  the  name  "Key- 
stone." 
'"  21  R.  P.  C.  373. 


CHAPTER  IX 

Dress  of  Merchandise 

Section  1 16.  Labels  which  are  not  strictly  trade-marks  are  protected. 

117.  Degree  of  similarity  calculated  to  deceive. 

118.  Mere  diversity  of  color  not  a  controlling  feature. 

119.  Imitation  of  a  single  feature  such  as  color,  form,  etc. 

120.  A  collocation  of  features  which  singly  might  be  copied  is  unfair. 

121.  Resemblance  in  several  features  may  be  fair  if  these  features 

are  common  to  the  trade. 

122.  Remarks  as  to  classification  of  the  following  cases  of  simulation 

in  dress  or  general  get-up. 

123.  Designs,  devices  and  figures. 

124.  Signatures  and  initials. 

125.  Reading  matter  on  labels  or  circulars. 

126.  Misleading  use  of  a  label  proper  in  itself. 

127.  Tobacco  tags,  and  cigar  bands,  etc. 

128.  Wrappers,  cartons,  etc. 

129.  Copying  bottles  used  by  competitor. 

130.  Refilling  containers  that  have  been  once  used. 

131.  Substitution  by  selling  of  inferior  goods  in  dress  of  goods  of  a 

higher  grade. 

132.  Get-up  of  wagons,  buildings,  etc. 

133.  Labels. 

(a).  Labels  not  registered  or  copyrighted  are  protected. 

(b).  Features  of  an  action  as  to  label. 

(c).  Kinds  of  labels. 

(d).  Classification  of  label  cases. 

I.  Simulation  of  labels  in  which  a  name  is  the  principal 
feature. 
II.  Cases  involving  label  in  which  the  salient  feature  is  a  de- 
vice or  catchword,  which  is  copied  or  simulated. 
in.  Cases  in  which  there  is  no  salient  feature  but  the  whole 

get-up  including  the  name  is  unfair. 
IV.  Cases  involving  a  general  resemblance  and  also  a  likeness 

in  the  name  used  in  which  relief  was  denied. 
V.  Cases  involving  no  similarity  in  name  but  a  resemblance  in 
general  appearance  amounting  to  unfair  competition. 
VI.  Cases  not  involving  names,  in  which  the  general  likeness 
in  get-up  is  not  close  enough  to  be  unfair. 

The  growth  of  the  doctrine  of  the  law  of  unfair  competition 
can  be  clearly  traced  in  studying  cases  relating  to  the  general 

233 


234  Dress  of  Merchandise 

appearance  of  goods  when  placed  on  the  market.  As  recently 
as  1890,  Mr.  High,  in  his  well-known  book  on  Injunctions,  said 
(§  107G):  ''There  can  be  no  trade-mark  in  the  exterior  form 
or  color  of  the  article,  and  hence  no  injunction  to  protect  the 
plaintiff  in  the  manufacture  of  an  article  of  a  peculiar  form 
or  color.  So  a  package  or  barrel  cannot  by  reason  of  its  pe- 
culiar form,  dimensions,  or  shape,  independent  of  any  symbol, 
figure,  or  device  impressed  upon  or  connected  with  it,  constitute 
a  trade-mark,  and  will  not  be  protected  by  injunction."  It  is 
true,  as  Mr.  High  states,  that  no  trade-mark  can  be  had  in  color, 
form,  dimension,  or  shape.  It  is  no  longer  true  that  injunction 
will  never  issue  to  protect  a  trader  who  has  acquired  a  particular 
interest  or  property  in  a  color  used  in  relation  to  his  goods,  or  in 
the  size,  shape,  or  form  in  which  he  puts  them  up.  It  has  be- 
come a  recognized  fact  that  severe  loss  to  him  and  confusion  on 
the  part  of  the  public  may  arise  because  of  the  imitation  of  some 
one  or  more  of  these  features  of  goods,  with  or  without  the  intent 
to  filch  away  the  trade  of  the  person  who  uses  them. 

§  116.  Labels  Which  Are  not  Strictly  Trade-marks  Are 
Protected.  —  It  was  once  the  tendency  of  courts  to  treat  all  labels 
as  technical  trade-marks;  but  it  has  been  found  that  many  labels 
do  not  meet  the  requirements  usually  mentioned  in  defining  a. 
trade-mark,  viz.:  Must  (1)  point  out  the  origin  or  ownership  of 
the  article;  (2)  be  affixed  to  a  commercial  article,  and  (3)  be  of 
such  a  nature  as  to  be  capable  of  exclusive  appropriation  by  one 
person.  Such  labels  are  nevertheless  under  the  protection  of  the 
law  of  unfair  competition,  and  the  unscrupulous  trader  who  seeks 
to  use  them  to  the  injury  of  their  owner,  will  be  enjoined. 

There  are  vast  numbers  of  labels  in  this  category,  and  this 
protection  is  as  adequate  in  many  ways  as  that  which  technical 
trade-marks  receive,  although  not  entirely  based  on  the  same 
principles.  In  Wirtz  v.  Eagle  Bottling  Co.,^  complainant  bottled 
beer  and  sold  it  at  wholesale.  He  invented  three  labels  which  he 
put  upon  his  goods.  These  the  defendant  imitated.  Said  the 
court:  "His  liquors  are  known  to  the  pubhc  by  these  labels. 
They  are  the  sign  or  symbol  by  which  his  liquors  are  known  in 
the  market.  If  we  speak  with  accuracy,  these  labels  cannot  be 
called  trade-marks,  but  they  serve  substantially  the  same  pur- 
pose. They  are  the  marks  by  which  the  complainant's  goods 
'  50  N.  J.  Eq.  1G4-C-1S92;  24  Atl.  658. 


Degree  of  Similarity  Calculated  to  Deceive      235 

are  distinguished  in  the  market  from  all  like  goods  put  upon  the 
market  by  other  persons,  and  are,  for  that  reason,  according  to 
many  decisions,  just  as  much  under  the  protection  of  the  law  as 
are  trade-marks.  The  law  protects  them  for  the  same  reasons 
and  in  precisely  the  same  way  that  it  does  trade-marks.  The 
leading  principle  of  the  law  on  this  subject  is,  that  no  man  shall 
be  permitted  to  sell  his  goods  on  the  reputation  which  another 
dealer  has  established  in  the  market  for  his  goods,  and  this  prin- 
ciple applies  with  equal  force  to  the  case  where  the  goods  of  such 
dealers  are  known  in  the -market  by  a  label,  as  it  does  to  the  case 
where  they  are  known  by  a  mark  which  is  strictly  a  trade-mark." 

§  117.  Degree  of  Similarity  Calculated  to  Deceive.  —  It  is 
hardly  necessary  to  restate  here  the  familiar  rule,  applicable  to 
trade-marks  and  all  forms  of  competition,  that  the  defendant's 
mark  may  not  only  not  1)6  an  exact  copy  of  that  of  the  plaintiff, 
but  that  there  may  be  many  differences  between  the  two  labels  or 
forms  of  dress,  and  yet  a  deceptive  resemblance  may  exist. 
The  question  is,  not  whether  the  two  articles  are  readily  dis- 
tinguishable when  set  side  by  side,  but  whether  the  general  im- 
pression made  by  defendant's  article  upon  the  eye  of  a  casual 
purchaser  who  is  unsuspicious  and  off  his  guard,  is  such  as  to  be 
likely  to  result  in  his  confounding  it  with  the  original  article.^'' 

The  rule  as  to  what  amounts  to  simulation  in  unfair  competition 
may  be  stated  in  the  same  language  applied  to  trade-marks  gener- 
ally in  Amoskeag  Mfg.  Co.  v.  Spear. "^  "  It  is  evident,  however,  that 
in  order  to  convey  a  false  impression  to  the  mind  of  the  public  as  to 
the  true  origin  or  manufacture  of  goods,  it  is  not  necessary  that 
the  imitation  of  an  original  trade-mark  shall  be  exact  or  perfect. 
It  may  be  limited  and  partial.  It  may  embrace  variations  that 
a  comparison  with  the  original  would  instantly  disclose,  yet  a 

1**  "The  question  is  whether  the  nat-  had  been  copied,  though  defendants 

ural  and  probable  result  of  the  use  by  themselves  might  not  have  known  it 

the  defendants  of  its  label  will  be  the  at  first.     For  the  facts  of  the  case  and 

deception  of  the  ordinary  purchaser,  for  other  points  involved  in  it,  see  it 

making  his  purchases  under  ordinary  reported    on    appeal,    as    Straus    v. 

conditions."    Notaseme    Hosiery    Co.  Notaseme  Co.,  240  U.  S,   179.    The 

v.  Straus,  201  Fed.  99  (C.  C.  A.  2d  U.  S.  Supreme  Court  sustained  the 

Cir.)    finding    the    similarity    in    tlie  injunction   but   not   the   recovery   of 

salient  feature  of  a  label  for  hosier}^  profits. 

to  be  calculated  to  deceive,  and  to  « g^ndf .   (N.  Y.)  599-06-1849. 

make  it  probable  that  the  earlier  label 


236  Dress  of  Merchandise 

resemblance  may  still  exist  that  was  designed  to  mislead  the 
public,  and  the  effect  intended  may  have  been  produced;  nor  can 
it  be  doubted  that  whenever  this  design  is  apparent,  and  this 
effect  has  followed,  an  injunction  may  rightfully  be  issued,  and 
ought  to  be  issued."     See  chapter  on  "Similarity."  ^ 

An  injunction  on  ground  of  deceit  from  mere  similarity  of 
appearance  will  not  issue  in  doubtful  cases  and  where  there  is 
no  real  evidence  of  actual  deceit  having  been  caused.^''  But  the 
circumstances  and  the  probable  intention  of  the  defendant  will 
have  weight.  "When  one  is  frankly  putting  out  an  imitation 
one  should  be  held  very  strictly  to  the  requirement  of  distinguish- 
ing one's  goods  from  the  original.  Any  doubt  must  be  resolved 
against  the  imitator."  "^ 

§  118.  Mere  Diversity  of  Color,  not  a  Controlling  Feature. — 
A  difference  in  the  color  of  a  label  or  WTapper  may  be  unimportant 
where  there  is  close  similarity  in  other  respects.  Diversity  of 
color  was  held  not  to  constitute  sufficient  differentiation  in 
Schmidt  v.  Brieg,^  in  which  the  court  said:  "In  fact  the  only 
material  difference  between  the  two  labels  in  design  and  appear- 
ance exists  in  the  colors,  but  this  is  no  defense.  The  difference 
in  color  is  a  mere  probative  fact,  a  circumstance  to  be  considered 
by  the  court  in  determining  the  ultimate  question  as  to  whether 
the  defendant's  devices  so  closely  resembled  the  plaintiff's  labels 
as  to  deceive  the  public,"  and,  naturally,  little  importance  will  be 

2°  It  was  said  in  Florence  Mfg.  Co.  norant,  the  unthinking  and  the  cred- 

V.  J.  C.  Dowd  &  Co.,  178  Fed.  73: —  ulous,  who,  in  making  purchases,  do 

"It  is  so  easy  for  the  honest  business  not   stop   to   analyze,    but   are   gov- 

man,  who  wishes  to  sell  his  goods  upon  erned    by    appearances    and    general 

their  merits,  to  select  from  the  entire  impressions." 

material    universe,    which    is    before  ^  Samuel  W.  Rushmore  v.  Manhat- 

him,   symbols,   marks  and   coverings  tan    Screw    &    Stamping    Works    (C. 

which   by   no   possibility   can   cause  C.  A.  July,  1908),  citing  Hall  Signal 

confusion    between    his    goods    and  Co.  v.  Railway  Signal  Co.,  153  Fed. 

those  of  competitors,  that  the  courts  907;   Cleveland   Foundry   Co.    v.   Sil- 

look  with  suspicion  upon  one  who,  in  ver,   134  Fed.  591;   Hildreth  v.  Nor- 

dressing  his  goods   for   the   market,  ton,  159  Fed.  428-1908  (C.  C.  A.) 

api^roaches  so  near  to  liis  successful  ^  Hiram  Walker  &  Sons  v.  Gneb- 

rival  that  the  pul)hc  may  fail  to  dis-  man,   224    Fed.    725-29    ("Canadian 

tinguish  between  them.     Tlie  law  is  Type"  whiskey), 

not  made  for  the  protection  of  ex-  ^  100    Cal.    672-81-1893;    35    Pac. 

perts,  but  for  the  public  —  that  vast  623;  22  L.  R.  A.  790. 
multitude     which     includes     the     ig- 


Diversity  of  Color  not  Controlling  Feature      237 

attached  to  marked  differences  or  even  total  dissimilarity  in 
parts  of  a  package  that  are  hidden  or  inconspicuous,  as  the 
bottom,  or  perhaps  the  sides  or  ends,  if  at  the  same  time  there  is  a 
close  resemblance  in  the  part  most  exposed  to  view,  such  as  the 
top  of  the  package. 

Defendant's  top  label  for  tobacco  or  cigarettes  was  of  the  same 
size  as  plaintiff's,  and  had  a  similar  light,  clouded  background. 
There  was  a  general  resemblance  in  the  devices  borne  by  the 
labels;  the  lettering  also  as  to  size,  color,  arrangement,  and  gen- 
eral effect  was  very  similar  on  the  two  labels.  Instead  of  the 
words  "Monopol  Tobacco  Works"  defendant's  label  bore  the 
words  "North  Pole  Tobacco  Works,"  and  the  wrappers  on  the 
bottom  of  the  box  were  dissimilar.     Defendant  was  enjoined.* 

The  deception  may  arise  not  only  from  the  use  of  words  that 
are  truthful  in  themselves,  but  from  the  printing  of  words  in  such 
colors  and  in  such  a  manner  or  with  such  accompaniments  as  to 
produce  a  false  impression. 

In  Keller  v.  B.  F.  Goodrich  Co.,^  there  was  such  a  simulation. 
Plaintiff  made  '^\kron  Dental  Rubber."  Defendant  made  and 
sold  ''Non-Secret  Dental  Vulcanite,  made  according  to  an  analysis 
of  the  Akron  Dental  Rubber."  They  printed  this  name  so  that 
the  words  ''Akron  Dental  Rubber"  appeared  in  red  ink  and  were 
prominent.  The  defendant  claimed  that  there  was  no  infringe- 
ment because  his  labels  did  not  assert  that  his  article  was  that  of 
the  plaintiff's,  that  the  similarity  would  not  mislead.  The  court 
said:  "We  should,  perhaps,  be  able  to  sustain  the  views  of  the 
appellant's  counsel  if  it  were  not  that  the  words  constituting  the 
appellee's  trade-mark  are  printed  in  colors  that  attract  attention 
at  once,  and  are  so  prominently  displayed  as  to  catch  and  hold 
the  eye.  The  manner  in  which  the  words  that  form  the  appellee's 
trade-mark  are  printed  is  such  as  to  make  them  very  conspicuous, 
thus  indicating  the  purpose  of  the  appellant  to  reap  some  advan- 
tage from  the  trade-mark,  and  not  merely  to  impart  information. 
If  the  object  had  been  to  impart  information  simply,  it  is  evident 
that  no  such  prominence  would  have  been  given  those  words." 

*  Monopol  Tobacco  Works  v.  Gen-  trade  name  which  was  condemned  in 

sior,  32  Misc.   (N.  Y.)  87-1900;  66  U?iited  L.  &  B.  Mfg.  Co.  v.  Barthels 

N.   Y.   Supp.    155.     A   similar   color  Mfg.  Co.,  221  Fed.  456. 

scheme  in  a  label  was  an  element  con-  ^  117   Ind.   556-7-1888;    19   N.   E. 

sidered  in  connection  with  a  similar  196. 


238  Dress  of  Merchandise 

§  119.  Imitation  of  a  Single  Feature,  Such  as  Color,  Form, 
etc.  —  One  often  sees  the  rule  stated  that  the  use  of  color  or  form 
or  shape  or  any  of  the  characteristics  which  may  be  used  by  all  in 
the  making  of  an  article  docs  not,  of  itself,  amount  to  unfair 
competition.  This  is  true  in  a  sense  and  untrue  in  another 
sense.  The  effect  of  imitating  a  single  feature  of  an  article  varies 
with  every  case.  No  definite  rule  can  be  laid  down.  It  depends 
on  the  conspicuousnoss  of  the  feature  copied.  Will  its  use  of  this 
feature  cause  buyers  of  the  article  to  be  confused  and  deceived? 
If  it  will,  the  question  then  arises,  as  to  the  extent  to  which  the 
court  has  power  to  enjoin  its  use.  It  can  grant  no  degree  which 
will  give  to  the  complainant  a  monopoly  of  the  use  on  any  par- 
ticular line  of  goods  of  any  color,  form,  size  or  other  common 
feature  of  the  article.  If,  however,  the  plaintiff  has  used  a  pecu- 
liar form,  or  shape  or  size,  he  will  be  protected  on  its  use  even 
against  one  who  copies  his  goods  in  this  one  particular  only. 
Seldom  does  the  newcomer  in  any  conmiercial  field  have  absolute 
rights  as  to  the  use  of  these  common  characteristics  of  the  article 
he  sells.  He  must  first  consider,  not  himself,  but  those  who  en- 
tered the  field  before  he  did,  with  whom  the  public  have  become 
acquainted.  If  he  cannot  enter  the  business  without  confusing 
himself  with  one  or  more  of  these  older  concerns  he  will  be  com- 
pelled to  stay  out.  Said  the  Massachusetts  court  on  this  point  as 
to  the  use  of  an  oval  loaf  in  the  manufacture  of  bread:  ''And  the 
defendants  would  have  a  right  to  make  and  sell  bread  which  has 
that  shape,  were  it  not  for  the  fact  that  bread  of  that  shape  means 
to  the  public  that  it  is  made  by  the  plaintiff."  Fox  v.  Best 
Baking  Co.,  209  Mass.  251-1911,  Loring,  J.  The  relief  given  the 
plaintiff  in  such  a  case  is  not  usually  absolute  prohibition  of  the  use 
of  the  feature  in  question  but  a  command  that  either  he  cease 
using  it  or  use  it  in  such  a  manner  as  to  eliminate  deception  of 
the  public.  In  Cook  &  Bernheimer  Co.  v.  Ross,^  the  imitation 
complained  of  was  solely  in  the  shape  of  the  bottle,  the  labels 
being  distinctive.  Complainant  had  the  sole  privilege  of  bot- 
tling at  the  distillery  "Mount  Vernon  Whiskey,"  and  of  attach- 
ing to  the  bottles  the  distiller's  guarantee  of  purity,  though 
others  were  also  entitled  to  purchase  in  bulk  and  bottle  and  sell 
as  "Mount  Vernon  Whiskey."  Complainant  adopted  a  peculiar 
and  novel  square  and  bulging-necked  bottle  and  after  the  whis- 

^  73  Fed.  203-1896. 


Collocation  of  Features,  etc.  239 

key  bottled  and  marketed  by  it  had  obtained  a  wide  reputation 
and  had  become  associated  by  the  pubHc  with  the  square-shaped 
bottle,  defendant  changed  its  form  of  bottle  and  began  to  use  a 
Chinese  copy  of  complainant's,  although  they  claimed  to  be 
using  stock  bottles  purchased  in  the  open  market.  Defendant's 
use  of  this  shape  was  held  to  amount  to  unfair  competition,  and  a 
preliminary  injunction  was  granted.     See  §  129. 

In  Sterling  Remedy  Co.  v.  Spermine  Medical  Co.,''  there  was 
a  clear  and  deliberate  imitation  of  the  peculiar  and  unusual  shape 
and  color  of  labels  and  style  of  box  adopted  by  the  complainant, 
as  well  as  of  letter  press  and  of  the  name  applied  to  the  goods. 
Held,  that  there  should  be  an  injunction  against  the  form  of 
tablet  and  shape  of  box  as  well  as  against  the  use  of  infringing 
names.  So,  also,  in  Franck  v.  Frank  Chicory  Co.,^  the  use  of  a 
particular  label  was  specifically  prohibited,  where  there  had  been 
imitation  in  other  respects  also.  The  court  considered  itself  not 
bound,  in  such  cases,  to  limit  its  injunction  to  the  combined  use 
of  all  the  features  of  imitation.  An  injunction  was  refused 
against  the  use  of  a  similar  color  scheme  (red  and  white)  in  labels 
for  condensed  milk  where  the  respective  trade  names  were  ''  Car- 
nation "  and  "  Wild  Rose,"  and  there  was  further  differentiation.^* 

§  120.  A  Collocation  of  Features,  Which  Singly  Might  be 
Copied,  is  Unfair.  —  A  large  proportion  of  cases  brought  to  en- 
join some  form  of  the  dress  of  goods  involves  the  use  of  more  than 
one  feature  of  its  general  get-up.  The  rules  of  law  as  to  the  use 
of  the  features  of  dress  vary  in  such  cases  quite  widely  from  the 
rules  applicable  where  only  one  feature  is  copied.  One  may  be 
entirely  free  to  use  singly  the  exact  color  or  design  of  form  used  by 
a  competitor,  yet  (unless  such  use  be  necessary  to  the  usefulness 
of  the  article)  if  several  or  all  are  used  the  presumption  is  that 
such  use  is  fraudulent,  unnecessary  and  for  the  purpose  of  passing 
off.  "He  (the  defendant)  has  no  right  to  use  these  things  in 
that  special  combination  in  which  the  complainant  uses  them,  if 
that  has  become  a  distinctive  combination  distinguishing  com- 
plainant's article."  ^''    It  was  attempted  in  Hennessy  v.  Dompe,^  to 

'  112  Fed.  1000-1901  (C.  C.  A.  7th  v.  Frye  &  Co.,  85  Wash.  133  (1915) 
Cir.).  (147  Pac.  865). 

8  95  Fed.  88-1899.  ^^  Moxie  v.  Daoust,  206  Fed.  434, 

^"Pacific  Coast  Condensed  Milk  Co.      -436  (1913)  C.  C.  A.  1st  Cir. 

« 19  R.  P.  C.  333-1902. 


240  DiiEss  OF  Merchandise 

defend  an  action  for  the  copying  of  the  general  appearance  of  a 
brandy  bottle  label  by  contending  that,  before  a  comparison 
could  be  made,  all  features  of  the  label  common  to  the  trade  must 
be  eliminated,  and  then  it  must  be  decided  (1)  whether  the  re- 
maining features  of  the  label  were  used  by  purchasers  to  dis- 
tinguish and  recognize  the  goods,  and  (2)  if  so,  were  those  features 
used  by  the  defendant  sufficiently  similar  to  those  of  the  plaintixT 
to  cause  confusion.  The  court  used  this  elimination  method  in 
deciding  against  the  plaintiff,  but  after  an  appeal  had  been  taken, 
and  before  it  was  heard,  the  defendants  admitted  their  label  was 
an  infringement,  and  consented  to  an  injunction. 

No  one  can  have  a  trade-mark  monopoly  in  color  of  paper,  or 
in  shape  of  label,  or  in  color  of  ink;  but  a  general  collocation  of 
such  details  will  be  protected  by  injunction.  Where  a  defendant 
and  its  predecessors  had  long  used  on  their  granite-ware  a  lozenge- 
shaped  label,  printed  in  black  ink,  on  grayish  blue  paper,  the 
complainant  subsequently  began  to  manufacture  similar  ware, 
using  a  rectangular  label  of  larger  size  than  defendant's,  printed 
in  dark  blue  ink  on  light  blue  paper,  with  a  trade  device  on  the 
upper  half.  Three  years  later  defendant  changed  its  label  for 
one  similar  as  to  paper  and  ink,  placing  on  the  upper  half  its  old 
lozenge-shaped  trade-mark.  No  reason  for  the  change  was 
shown.  No  weight  was  given  to  defendant's  affidavits  that 
there  had  been  no  intention  to  mislead,  and  it  was  held  unfair 
competition.  ^'^ 

An  exclusive  right  to  use  a  particular  form,  color,  or  other 
feature,  not  by  itself,  but  in  combination  with  certain  other 
features,  may  be  acquired.  In  New  England  Awl  &  Needle  Co. 
V.  Marlborough  Awl  &  Needle  Co.,^^  defendant  imitated  plain- 
tiff's packages  in  the  color  of  the  box  and  color  of  the  label,  the 
words  and  ty])e  of  the  inscription,  and  in  practically  every  other 
detail  excepting  the  name  and  address  of  the  manufacturer.  In 
deciding  this  to  be  unfair  competition.  Holmes,  J.,  after  remarking 
that  no  monopoly  of  color  could  be  claimed,  said  (p.  156):  "But 
the  most  universal  element  may  be  appropriated  as  the  specific 
mark  of  a  plaintiff's  goods  if  it  is  used  and  claimed  only  in  con- 
nection with  a  sufficiently  complex  combination  of  other  things. 

^oLalarwe  &  Grosjean  Mfg.  Co.  v.  '» 168   Mass.   154-1897;  46   N.   E. 

National  Enameling  &  Stamping  Co.,      386. 
109  Fed.  317-1901  C.  C.  S.  D.  N.  Y.) 


Collocation  of  Features,  etc.  241 

The  plaintiff  did  not  claim  the  exclusive  right  to  brown  labels  for 
awls,  but  it  claimed  the  exclusive  use  of  the  brown  color  in  the 
combination  which  we  have  described.  If  the  only  other  element 
besides  the  color  had  been  a  box  of  a  certain  size,  and  a  label  of 
a  certain  shape,  the  case  might  be  different,  ^^  but  when  there  is 
added  an  inscription  which  both  in  its  pictorial  aspect  of  black 
marks  and  in  its  meaning  was  calculated  to  confuse  if  not  to  de- 
ceive, the  plaintiff's  claim  seems  to  us  moderate."  ^^" 

In  this  class  of  cases  the  ultimate  question  asked  is  this:  Is 
the  defendant,  not  expressly,  but  in  effect,  representing  or  en- 
abling the  retailer  to  represent  to  the  public  that  the  goods 
offered  are  the  familiar  goods  of  the  complainant?  The  various 
resemblances  are  to  be  regarded  as  evidentiary  facts,  bearing  on 
the  one  hand  on  the  presumable  intent  of  the  defendant  and  on 
the  other  on  the  probable  effect  upon  the  mind  of  the  ordinary 
purchaser.  Thus  in  Frese  v.  Bachof,^^  Wheeler,  J.,  said:  "Prob- 
ably no  mere  form  of  a  package  would  ever  alone  amount  to  a 
representation,  capable  of  deceiving,  that  the  wares  contained 
in  it  were  those  of  any  particular  make.  But,  when  the  form  of  the 
packages,  the  color  of  the  wrappers  and  papers  done  up  with  them, 
and  the  form  and  color  of  the  labels  are  considered  all  together, 
it  is  quite  apparent  that  when  they  had  been  so  long  used  by  the 
orator's  firm  for  holding  this  particular  compound  when  offered 
for  sale,  the  mere  appearance  of  the  packages  would  amount  to  a 
representation  that  they  contained  that  article,  of  that  manu- 
facture." In  this  case  the  name  of  the  article,  rightfully  used  by 
both  parties,  was  ''Hamburg  Tea,"  which  defendant  put  up  in 
packages  closely  resembling  complainant's  in  being  of  long  cylin- 
drical shape,  with  pink  wrappers,  and  papers  of  instructions  of 
the  same  colors  and  with  labels  similar  in  arrangement  and  ap- 
pearance, the  only  substantial  difference  being  in  the  names  of  the 
parties. 

In  Jones  v.  Hallworth,^'^  Kekewich,  J.,  after  remarking  that 
any  one  of  a  number  of  features  may  be  open  to  common  use, 

"  Enoch    Morgan's    Sons    Co.    v.  which  the  pubUc  has  come  to  recog- 

Troxell,  89  N,  Y.  292-1882.  nize  the  plaintiff's  product."    Howard 

15"  "  The  sole  question  in  such  cases  Dustless  Duster  Co.  v.  Carleton,  219 

is:  Does  the  adoption  of  the  coUo-  Fed.  913. 
cated  features  of  the  plaintiff's  style          "  14  Blatchf.  432-5-1878. 
of    dress    disclose    a    differentiation  "  14  R.  P.  C.  225-34-1897. 

from  that  previously  adopted,  and  by 


242  Dress  of  Merchandise 

so  that  as  to  any  one  of  them  singly  there  may  be  an  innocent 
resemblance,  says:  "But,  by  an  inductive  process,  one  may  come 
to  this  conclusion,  that  every  one  of  those  perf€ctly  innocent 
things,,  when  combined  in  a  series,  may  produce  something  which 
is  the  reverse  of  iimocent."  ^^" 

A  good  example  of  undue  imitation  in  the  collocation  of  features 
making  a  general  impression  on  the  purchaser,  in  connection  of 
a  trade-name  which  was  somewhat  similar  to  complainant's 
trade-name,  though  not  enough  so  as  to  infringe  it,  is  found  in 
Gulden  v.  Chance.^'' 

§  121.  Resemblance  in  Several  Features  May  be  Fair,  if 
These  Features  Are  Common  to  the  Trade.  —  Even  where  there 
is  a  general  rese-mblance,  such  as  may  tend  to  some  confusion 
in  the  mind  of  the  casual  purchaser,  and  although  such  a  re- 
semblance may  appear  to  have  been  designed  by  the  purchaser, 
the  details  in  which  similarity  is  shown,  and  indeed  the  simi- 
larity of  general  effect  may  be  common  to  the  trade.  To  con- 
stitute unfair  competition  the  features  imitated  must  be  such  as 
distinguished  plaintiff's  goods  from  others,  not  such  as  he  shares 
with  the  trade  generally.  ^^^    For  example,  in  United  States  Tobacco 

I'"  It  is  immaterial  that  plamtiff^has  the  resemblance  is  such  as  is  calcu- 
no  exclusive  right  in  any  one  element  lated  and  intended  to  deceive  the 
of  the  dress  or  get-up  of  the  article,  ultimate  purchaser.  Defendants  were 
"so  long  as  the  ensemble  has  come  to  enjoined  from  using  their  inf ring- 
be  a  public  guarantee  of  origin  or  ing  bottles  or  labels,  and  to  ac- 
quaUty."  Howard  Dustless  Duster  Co.  count  for  plaintiff's  lost  profits  and 
Co.  V.  Carleton,  219  Fed.  913.  damages. 

i'''182  Fed.  303   (1910)   C.  C.  A.  For  another  recent  example  of  decep- 

3d  Cir.  tfive  collocation,  see  Meccans  v.  Wa§- 

This  case  marks  the  end  of  a  long  7ier,  234  Fed.  912  (1916)  in  which  the 

litigation.   See  163  Fed.  447;  165  Fed.  imitator's  mechanical  toy  was  put  up 

624;     180    Fed.     178.      Defendants,  in  covers  of   the  same   color,  with  a 

shortly  after  taking  a  former  salesman  label  of  the  same  predominant  color,  a 

of  plaintiff's  into  their  employ,  adopted  similar  picture  of  a  boy,  and  a  legend 

the    name    "Don    Cajsar"    for    their  of  equivalent  meaning, 

olives,  and  labels  and  packages  very  ""  In    Coca-Cola    Co.    v.    Glee-Nol 

similar  to  those  long  used  by  com-  Bottling  Co.,  221  Fed.  61  (C.  C.  A.  5th 

plainants  in  selling  their  "  Bon  Carlos"  Cir.)  the  similarity  of  bottles  in  size, 

brand.      Held    that    lack    of    actual  shape,  color  and  general  appearance, 

fraud  or  wrongful  intent  was  no  de-  since    these    were    common    features 

fence.    The  true  test  for  unfair  com-  to  the  trade  and  in  view  of  differ- 

petition   is   not   whether   jobbers   or  cntiation   in  other  respects,  was   not 

dealers  would  be  deceivedj  but  whether  found  to  justify  an  injunction. 


Resemblance  in  Several  Features  May  Be  Fair    243 

Co.  V.  McGreenery,^^  the  complainant  sold  cut  plug  tobacco  in 
packages  bearing  conspicuously  the  words  ''Central  Union"  and 
"Union  Made"  and  the  label  of  a  trade  union,  together  with 
other  words  and  devices.  Defendant  sold  similar  tobacco  in 
packages  of  the  same  size,  the  paper  being  of  the  same  kind  and 
quality.  Its  packages  were  conspicuously  marked  ''Union 
Leader,"  and  while  there  was  in  other  points  a  degree  of  resem- 
blance, there  were  also  noticeable  differences,  particularly  in  the 
device.  Wrappers  resembling  complainant's  in  shape,  size, 
style  and  color  of  paper,  and  in  style  of  lettering  had  long  been 
common,  and  the  word  "Union"  had  been  used  in  various  brands. 
Some  purchasers  were  shown  to  have  been  deceived.  It  was  held, 
that  the  resemblance  was  prinipipally  in  features  often  combined 
in  common  use,  and  that  deception  had  not  been  shown  to  have 
arisen  from  resemblance  in  any  feature  peculiar  to  complainant. 
Said  the  court  (p.  534):  "While  fraud  alone  is  not  sufficient  to 
entitle  the  complainant  to  a  decree,  yet  it  is  a  fact  to  be  taken 
into  consideration  by  the  court.  A  defendant  may  lawfully  seek 
to  enlarge  his  custom  by  selling  cheaper  than  his  rivals,  packages 
of  tobacco  put  up  in  an  old  form;  and  this,  even  if  the  packages 
thus  sold  are  bought  by  a  careless  public  in  the  belief  that  the 
tobacco  is  that  of  the  complainant.  A  defendant  may  not  law- 
fully seek  to  obtain  the  complainant's  custom  by  deceiving  the 
public  through  the  appropriation  of  some  characteristic  of  the 
complainant's  package  which  was  new  in  the  art,  and  is  the  com- 
plainant's peculiar  property.  The  distinction  thus  expressed 
must  be  kept  carefully  in  mind." 

So  in  Pay  ton  &  Co.  v.  Snelling,  Lampard  &  Co.,  Ltd.,^^  the 

18 144  Yed.  531-1906  (Circ.  Ct.  of  something  peculiar  to  him  and  by- 
Mass.);  affirmed  in  144  Fed.  1022.  reason  of  defendant  having  adopted 

19 17  R.  P.  C.  48-53-1900.     "What  some    mark    or    device    or    label    or 

is  it  that  the  plaintiffs  must  make  out  something  of  that  kind  wliich  distin- 

in  order  to  entitle  them  to  succeed  in  guishes    the    plaintiff's    from    other 

this     action?    *    *    *    Where     the  goods  which  have,  like  his,  the  fea- 

features  in  which  they  resemble  each  tures  common  to  the  trade.    Unless 

other  are  common  to  trade,  what  has  the  plaintiff  can   bring  his   case  up 

the  plaintiff  to  make  out?    He  must  to   that   he   fails."    Cited   with   ap- 

make  out  not  that  the  defendant's  are  proval  and  as  a  rule  by  Kekewich,  J., 

like  his  by  reason  of  those  features  in  King  &  Co.  v.  Gillard,  21  R.  P. 

which  are  common  to  them  and  other  C.   589.    Other   examples  of  resem- 

people,  but  he  must  make  out  that  blance  in  dress  resulting  from   con- 

the  defendant's  are  like  his  by  reason  formity  to  trade  custom,  and  accord- 


244  Dress  of  Merchandise 

court  remarked:  "The  evidence  is  very  strong  that  one  tin  may 
be  mistaken  for  the  other,  —  very  hkely;  but  why?  Because 
of  the  features  common  to  them  and  common  to  all." 

In  Hoyt  V.  Hoyt,^^  plaintiffs  made  and  sold  "Hoyt's  German 
Cologne"  at  Lowell,  while  defendants  made  and  sold  "Hoyt's 
Egyptian  Cologne"  at  Philadelphia.  Defendants  used  a  bottle 
of  similar  shape  to  that  used  by  plaintiffs.  This  was,  however, 
a  stock  bottle  which  anyone  could  buy;  and  they  used  a  similar 
cap  label,  although  one  that  had  been  used  by  others  than  plain- 
tiffs; they  also  packed  l^ottles  in  boxes  in  the  peculiar  manner 
adopted  by  plaintiffs.     Held  not  unfair  competition. 

An  injunction  was  refused  in  Coats  v.  Merrick  Thread  Co.,^^ 
in  which  there  was  a  certain  similarity  in  labels  placed  upon  the 
ends  of  spools,  especially  in  the  use  of  concentric  rings  of  black 
and  gold,  which  had  become  common  in  the  trade,  and  in  em- 
bossing on  the  border  the  numeral  40  for  the  number  of  the 
thread.  The  labels  were  differentiated  by  the  manufacturer's 
name  conspicuously  printed. 

§  122.  Remarks  as  to  Classification  of  the  Following  Cases 
of  Simulation  in  Dress  or  General  Get-up.  —  Concurring  simi- 
larity in  name  and  in  dress  may  amount  to  unfair  competition, 
though  the  similarity  in  either  respect  by  itself,  would  not  be 
enough.  In  the  following  pages  are  groups  of  cases  in  which 
certain  features  of  the  get-up  are  prominent  or  distinctive,  but 
there  are  many  cases  of  similarity  of  dress,  or  general  appearance 
of  labels  and  packages,  which  are  very  difficult  to  classify,  be- 
cause it  is  a  question  of  the  concurrent  effect  of  many  details; 
and  it  is  often  impossible  to  put  one's  finger  on  a  particular  point 
of  resemblance,  and  say  that  is  the  controlling  or  salient  feature. 

Each  case  stands  by  itself.  The  questions  presented  by  any 
particular  case  are  rather  of  fact  than  law.  Similarity  in  gen- 
eral, and  in  the  goods  themselves,  as  distinguished  from  the 
containers  or  packages,  are  separately  treated  in  the  chapters 
on  "  Simulation  of  Articles  Themselves." 

ingly  held  not  to  constitute  unfair         ^o  143  Pa.   St.   623-1891;   22  Atl. 

competition    are:    Holeproof    Hosiery  755;  13  L.  R.  A.  343. 

Co.  V.   Wallach  Bros.,  192  Fed.  534         2' 149  U.  S.  562-1892;  37  L.  ed. 

(boxes  similar  in  size,  shape,  etc.,  and  847;  13  Sup.  Ct.  966. 

often  yellow  in  color,  and  change  from 

red  to  yellow  explained). 


Designs,  Devices,  and  Figures  245 

§  123.  Designs,  Devices,  and  Figures.  —  It  is  a  common  prac- 
tice to  designate  goods  by  designs,  symbols,  and  figures  which  are 
original  or  peculiar,  and  serve  to  identify  the  goods  in  the  same 
manner  as  a  name  identifies  them.  These  devices  are  of  par- 
ticular value  to  a  maker  of  goods  which  are  largely  consumed  by 
ignorant  people  or  people  unfamiliar  with  the  English  language, 
because  they  enable  a  purchaser  of  this  sort  to  recognize  the  goods 
when  he  sees  them  a  second  time.  See  §  324.  In  many  cases  the 
devices  are  not  technical  trade-marks,  and  not  patented  as  de- 
signs. Here  we  deal  with  such  devices  only.  In  Colman  v. 
Crump, ^"^  the  plaintiffs  for  seventeen  years  had  made  mustard, 
placing  on  their  packages  a  figure  of  a  bull's  head.  When  they 
began  to  use  it,  they  knew  of  no  one  using  such  mark.  They 
never  registered  this  mark,  nor  attempted  to  comply  with  the 
statutes  of  the  United  States  relating  to  trade-marks.  Their 
product  came  to  be  known  as  ''Bull's  Head  Mustard."  The  de- 
fendants were  manufacturers  of  labels  which  were  used  by  mus- 
tard manufacturers;  some  of  these  labels  were  almost  exact 
copies  of  the  plaintiffs'  labels.  Held,  that  plaintiffs  were  entitled 
to  restrain  the  use  of  a  similar  figure  on  other  brands  of  mustard, 
the  court  saying  (p.  580) :  "The  fact  that  the  same  device  is  used 
upon  other  articles  of  merchandise  does  not  take  from  the  plain- 
tiffs their  rights  to  its  exclusive  use  on  this  one  article  of  their 
manufacture,"  and  also  ''A  party  may  have  a  property  in  — 
that  is,  an  exclusive  right  to  use  —  a  name,  symbol,  figure,  letter, 
form,  or  device  to  distinguish  goods  manufactured  and  sold  by 
him,  and  those  manufactured  and  sold  by  others,  or  to  indicate 
when  or  by  whom,  or  at  what  manufactory  the  article  was  manu- 
factured. It  is  an  infraction  of  that  right,  to  print  or  manu- 
facture, and  sell  for  use  upon  articles  of  merchandise  of  the  same 
kind  as  those  upon  which  it  is  used  by  the  proprietor,  any  device 
or  symbol  which  by  its  resemblance  to  the  established  trade-mark 
will  be  liable  to  deceive  the  public,  and  lead  to  the  use  of  that 
which  is  not  the  manufacture  of  the  proprietor,  believing  it  to  be 
his."  22'' 

"  70  N.  Y.  573-78-1877.  claimed  as  a  trade-mark.    Defendant's 
22"  In  Schwann  v.  Miele,  203  Fed.  label,  also  bearing  a  woman's  head,  and 
176,  a  salient  feature  of  the  labels  on  quite   similar  in   general   appearance 
complainant's  jars  of  massage  cream  and  effect,  was  held  calculated  to  de- 
was  the  figure  of  a  woman's  head,  ceive.    In    Van  Zile  v.  Nomh  Mfg. 


246  Dress  of  Merchandise 

Not  only  are  these  devices  on  goods  important  in  themselves, 
as  identifying  the  goods  to  the  eye  of  the  purchaser,  but  they  have 
an  additional  value,  as  the  basis  of  popular  nicknames  for  the 
goods  on  which  they  are  put.  For  instance,  in  the  case  just 
cited,  mustard  on  which  a  bull's  head  had  long  appeared  came 
to  be  known  as  "Bull's  Head  Mustard,"  and  plasters  on  which 
a  red  cross  had  been  used  came  to  be  called  "Red  Cross  Plas- 
ters." ^^  In  the  latter  case  it  was  held,  that  the  use  of  a  Greek 
cross  of  somewhat  different  form,  with  a  red  circle  in  the  center, 
was  an  infringement,  despite  the  fact  it  bore  on  its  face  letters 
and  marks  not  on  the  other  label,  and  though  there  was  little  re- 
semblance in  the  package  or  other  parts  of  the  get-up. 

In  Scixo  V.  Provezende,^'^  the  court  says:  "I  do  not  consider 
the  actual  physical  resemblance  of  its  two  marks  to  be  the  sole 
question  for  consideration.  If  the  goods  of  a  manufacturer 
have  from  the  mark  or  device  he  has  used  become  known  in  thS 
market  by  a  particular  name,  I  think  that  the  adoption  by  a 
rival  trader  of  any  mark  which  will  cause  his  goods  to  bear  the 
same  name  in  the  market  may  be  as  much  a  violation  of  the 
rights  of  that  rival  as  the  actual  copy  of  his  device."  ^^ 

§  124.  Signatures  and  Initials.  —  Among  those  devices  which 
are  frequently  copied  are  the  autograph  signatures  of  the  makers 
or  inventors  of  the  goods  on  which  the  labels  appear.  These  are 
to  be  considered  in  the  same  category  with  all  of  these  figures  and 

Co.,  228  Fed.  829,  there  was  undue  use  of  this  device  by  defendant's 
imitation  of  the  device  of  a  shield,  in  predecessor  antedated  that  by  plain- 
connection  with  the  use  of  a  some-  tiff's  predecessor.  PreUminary  in- 
what  similar  trade  name.  junction  denied. 

"  Johnson  v.  Bauer  &  Black,  82  Wellman  &  Dwire  Tobacco  Co.  v. 
Fed.  662-1897.  Ware  Tobacco  Works,  46  Fed.  289- 
2^  1  Ch.  App.  192-6-1865.  1891  (Cir.  Ct.  Minn.).  Defendants' 
25  Philadelphia  Novelty  Co.  v.  label  for  tobacco  packages  resembled 
Blakeslcy  Novelty  Co.,  37  Fed.  365-  complainants'  in  the  colors  used,  and 
1889  (Cir.  Ct.  Conn.).  Defendant  in  certain  devices  of  a  shield  or  ban- 
put  up  hair-crimpers  in  a  box  of  the  ner,  and  an  ellipse  with  a  circle,  and 
same  color,  and  bearing  a  label  of  otherwise,  so  that  in  spite  of  varia- 
the  same  color  as  used  by  the  plain-  tions  where  was  a  general  resem- 
tiff.  The  boxes  were  not  alike  in  blance.  There  was  no  similarity  in 
shape,  nor  in  the  printed  matter  on  the  names  apphed  by  the  represent- 
the  label,  but  there  was  a  resem-  ative  manufacturers  to  their  tobacco, 
blance  in  respect  to  the  central  de-  Injunction. 
vice,  a  woman's  head  or  bust;  the 


Reading  Matter  on  Labels  or  Circulars  247 

devices,  and  even  when  not  trade-marks  are  protected  under  the 
rules  of  unfair  competition.  In  C.  F.  Simmons  Medicine  Co.  v. 
Simmons, ^^  the  headnote  states  the  ''defendant  manmfactured 
and  sold  a  medicine  to  which  he  gave  a  name  similar  to  the  name 
of  the  complainant's  medicine,  including  the  name  of  the  inventor; 
he  placed  on  the  wrapper  of  his  medicine  a  picture  of  a  bust,  and 
an  autograph  signature,  complainant's  medicine  having  long 
been  known  among  an  ignorant  class  of  purchasers  by  similar 
signs;  he  issued  directions  which  were  almost  a  literal  copy  of  the 
complainant's;  and  he  published  a  card  in  which  he  described 
himself  as  the  son  and  successor  of  the  inventor  of  complainant's 
medicine."     This  was  unfair  competition. 

Where  a  name,  portrait,  or  facsimile  signature  of  another  is 
employed  without  consent  and  against  his  will,  with  a  view  to  de- 
ceive the  public  into  the  belief  that  the  product  sold  was  prepared 
by  him,  and  offered  to  purchasers  with  his  sanction,  an  injunction 
will  be  granted.  Jenkins,  Circuit  Judge,  has  said  in  such  a  case: 
"The  name  of  an  eminent  philanthropist  was  taken  without  his 
consent  and  against  his  protest.  This  assumption  of  name  was  a 
wrong  which  we  cannot  doubt  a  court  of  equity  would,  upon  his 
application,  have  restrained,  even  if  the  purpose  of  the  corpora- 
tion had  been  wholly  innocent  and  praiseworthy;  but  here,  it  is 
clear,  the  name,  the  portrait,  and  the  facsimile  signature  of  Rev. 
Sebastian  Kneipp  were  employed,  not  only  without  his  consent 
and  his  will,  but  were  so  assumed  with  a  view  to  deceive  the 
public,  and  to  induce  the  belief  that  the  produce  marketed  and 
sold  was  prepared  under  his  supervision,  and  offered  to  the  public 
with  his  sanction.  Under  such  circumstances,  equity  will  not 
hesitate  to  extend  its  preventive  arm."  ^^ 

§  125.  Reading  Matter  on  Labels  or  Circulars.  —  Reading 
matter  on  labels  and  wrappers  often  consists  of  the  names  of 
makers,  agents,  etc.,  designations  of  quality  or  quantity,  du'ec- 
tions  for  use,  cautions  against  imitations,  warnings  as  to  features 
of  the  marks  used  on  the  genuine  goods.  The  questions  relating 
to  names  are  fully  discussed  in  the  chapter  on  "  Trade  Names" 
Directions  for  use  are  frequently  copied  in  whole  on  in  part  by 

28  81     Fed.     163-1897     (Cir.     Ct.  Kneipp  Medicine  Co.,  82  Fed.  321- 

Ark.).  1897;  53  U.  S.  App.  425.    See  also 

"  Kathreiner's  Malzkaffee  Fahriken  Mueller    Mfg.    Co.    v.    McDonald    & 

Mil  Beschraenkter  Haftung  v.  Pastor  Mooson  Mfg.  Co.,  164  Fed.  1001-1909. 


248  Dress  of  Merchandise 

an  unfair  dealer.  Thus  phraseology  alone  may  be  copied  or, 
in  addition,  the  type  and  general  method  of  printing  may  be 
imitated  also.  Doing  either  or  both  of  these  things,  especially  if 
accompanied  by  imitation  in  other  points,  may  be  treated  as 
unfair  competition.  In  Ball  v.  Siegel,^^  it  is  said  that  it  is  well 
settled  that  directions,  advertisements,  notices,  etc.,  constitute 
no  part  of  a  trade-mark.  In  Bates  Mfg.  Co.  v.  The  Bates  Machine 
Co.,"^^  plaintiff  put  up  his  goods  in  boxes  on  one  end  of  which  was  a 
label  and  the  words  "A  Few  Dont's."  Under  this  title  were 
seven  different  sentences  which  begin  with  the  word  "Don't." 
Defendant's  goods  were  put  up  in  boxes  of  similar  shape;  on  the 
end  of  each  was  a  label  bearing  the  words  ''A  Few  Dont's."  On 
both  the  defendant's  and  plaintiff's  label  the  word  ''Dont's,"  was 
in  large  capital  letters.  Under  the  title  of  defendant's  labels 
were  seven  sentences  commencing  with  the  word  "Don't";  four 
of  these  were  literally  the  same  as  those  used  upon  the  plaintiff's 
boxes,  and  the  other  three  were  substantially  the  same.  The 
labels  on  complainant's  boxes  also  contained  the  words  "Useful 
Hints."  On  the  defendant's  boxes  was  a  series  of  "Important 
Suggestions,"  the  substance  of  these  hints  and  suggestions  being 
the  same.     Preliminary  injunction  was  granted. 

Circulars,  price  lists  and  advertising  matter  may  be  so  imitated 
in  form,  arrangement  and  general  appearance  as  to  amount  to 
unfair  competition. -^° 

§  126.  Misleading  Use  of  a  Label  Proper  in  Itself.  —  A  per- 
son may  have  full  right  to  the  use  of  a  label  and  yet  by  concealing 
a  part  of  it  in  packing  his  goods,  or  by  unduly  emphasizing  a 
part  of  it,  give  the  impression  that  his  goods  are  those  of  some- 
one else.  The  cases  here  given  are  those  showing  instances,  not 
of  the  copying  of  a  label,  but  of  attempts  to  approximate  the 
appearance  of  the  plaintiff's  goods  by  misuse  of  a  label,  which 
properly  displayed  would  not  be  a  violation  of  the  plaintiff's 
rights.     In  Williams  v.  Brooks, ^^  plaintiffs  for  ten  years  past  had 

28 116  lU.  137-1886;  4  N.  E.  667.  B.  M.  Co.,  236  Fed.  731.    Circulars 

"  141  Fed.  213-1905.  sent  to  agents,  however,  though  imi- 

'^'^  Elbs    V.    Rochester    Egg  Carrier  tative,  would  not  ordinarily  tend  to 

Co.,  134  N.  Y.  Supp.  979,  advertis-  divert   trade.     Edward   Hilker   Mop 

ing  matter,  as  well  as  wrappers  con-  Co.  v.  U.  S.  Mop.  Co.,  191  Fed.  613 

demned.      American    Chicle    Co.    v.  (C.  C.  A.  6th  Cir). 

W.  J.  White  Chicle  Co.,  196  Fed.  977;  '« 50  Conn.  278-1882. 
Bankers'  H.  W.  Co.  v.  Beaver  S.  & 


Tobacco  TaGkS,  Cigar  Bands,  etc.  249 

been  making  hairpins  at  Birmingham,  England,  under  the  name 
of  D.  F.  Tayler  &  Co.  These  they  put  in  pink,  yellow,  and 
brown  papers  and  imported  same  into  the  United  States.  For 
three  years  the  defendants  had  been  making  hairpins  in  the  United 
States  and  had  put  them  up  in  pink  and  yellow  papers,  upon 
which  was  a  printed  statement  that  the  hairpins  were  manufac- 
tured by  L.  B.  Taylor  &  Co.,  Cheshire,  Connecticut.  The  court 
below  found  that  the  wrappers  were  so  nearly  like  those  of  the 
plaintiffs  as  to  deceive  the  careless  and  unwary  purchaser.  The 
defendants  used  their  labels  with  full  knowledge  of  the  plaintiffs' 
trade-mark  and  reputation.  The  defendants  always  sold  their 
pins  as  of  domestic  manufacture,  and  for  less  than  the  plaintiffs 
charged  for  theirs.  When  the  defendants'  pins  were  done  up  in 
ounce  packages  and  looked  at  separately,  the  words  ''Cheshire, 
Conn.,"  appeared  plainly  on  the  wrapper;  but  when  these  were 
gathered  into  pound  packages,  the  whole  of  the  printed  label  was 
not  seen.  Says  the  court  (p.  282):  "The  defendants  have  no 
right  to  destroy  or  diminish  the  property  of  the  plaintiffs  in  the 
name  of  'D.  F.  Tayler  &  Co.,'  and  in  the  device  and  vignette  with 
which  it  is  connected,  applied  to  the  manufacture  and  sale  of 
hairpins,  by  so  printing  the  name  of  'L.  B.  Taylor  &  Co.,'  not 
borne  by  either  of  them,  but  purchased  solely  for  use  in  connection 
with  this  particular  branch  of  their  business,  as  part  of  a  device 
and  vignette  upon  a  pink  or  yellow  wrapper  *  *  *  as  that 
their  entire  device  shall  so  closely  resemble  that  of  the  plaintiffs 
as  to  be  liable  to  deceive  careless  and  unwary  purchasers;  and 
this  regardless  of  the  fact  that  the  defendants  believed  their 
manner  of  use  of  the  name  and  vignette  to  be  within  the  law;  for 
the  injury  to  the  plaintiffs  remains  the  same." 

§  127.  Tobacco  Tags,  and  Cigar  Bands,  etc.  —  Tags  on  tobacco 
packages  and  bands  on  cigars  are  so  conspicuous  as  badges 
of  identity,  in  view  of  the  similarity  in  various  other  points 
for  the  most  part  common  to  the  trade,  that  sometimes  a 
resemblance  in  these  has  been  held  to  be  calculated  to  deceive, 
even  though  the  name  on  the  tags  or  bands  may  have  been  differ- 
ent. In  Lorillard  v.  Wight,^^  complainants  fastened  upon  the  out- 
side of  the  plugs  of  their  tobacco,  tin  tags  variously  colored  accord- 
ing to  the  brand,  with  the  name  of  the  brand  and  the  makers 
stamped  upon  them.  They  were  the  first  to  use  this  device,  and 
=•1 15  Fed.  383-1883  (C.  C.  Md.). 


250  Dress  of  Merchandise 

the  public  had  come  to  recognize  their  products  by  these  tags. 
Defendant,  or  parties  represented  by  him,  afterward  put  upon  the 
market  plug  tobacco,  bearing  the  tin  tags  of  the  same  size  and 
shape,  the  same  color  and  enamel  finish.  The  words  were  very 
different,  but  they  were  in  small  letters  and  in  ink  of  the  same 
color.  Defendant's  plugs,  however,  were  of  different  size,  color, 
and  flavor.  Held,  that  while  defendant  had  a  right  to  use  tin 
tags,  he  had  no  right  to  use  tags  so  nearly  resembling  com- 
plainant's as   to  mislead   the  public. ^^^ 

In  Reynolds  Tobacco  Co.  v.  Allen  Bros.  Tobacco  Co.,^"^  com- 
plainant and  its  predecessors  had  since  about  1880  made  and 
sold  a  brand  of  plug  tobacco  under  the  name  ''Schnapps,"  and 
from  1894  attached  to  the  plugs  distinctive  tags  of  lozenge  shape, 
with  the  word  "Schnapps"  in  slanting  red  letters  on  dark 
background.  This  brand  was  largely  advertised  with  pictures 
of  the  tag  and  was  generally  recognized  by  the  tag,  having  a 
very  large  sale  in  the  South  where  many  customers  could 
not  read.  Defendant  afterward  put  on  the  market  an  in- 
ferior grade  of  tobacco  in  plugs  of  the  same  size  and  shape,  with 
tags  of  the  same  color  and  slant,  the  only  difference  being  that 
the  name  "Traveller"  was  used  instead  of  "Schnapps."  It  was 
shown  that  the  tag  was  intended  to,  and  actually  did,  deceive 
customers.  Injunction  granted.  A  preliminary  injunction  was 
granted  against  the  use  by  defendant  upon  cigars  of  panatella 
shape,  bands  similar  in  colors,  and  bearing  a  similar  elongated 
oval  escutcheon. ^^ 

§  128.  Wrappers,  Cartons,  etc.  —  The  rules  of  similarity,  as  to 
copying  goods  themselves  and  as  to  labels,  apply  to  all  sorts  of 
containers,  such  as  boxes,  wrappers,  cartons,  bags,  envelopes  and 
the  like.     Cases  involving  a  simulation  of  these  articles  could  be 

31"  In    Armstrong    Seatag    Corpora-  any  tagged    oysters   were    complain- 

tion    V.    Smith's    Island    Oyster    Co.,  ant's. 

224  Fed.  100  (C,  C.  A.  2d  Cir.)  it  was  "  151  Fed.  819-1907  (C.  C.  W.  D. 

held    that    complainant    could    not  Va.). 

monopolize   the   tagging   of   oysters,  "  Clay   v.    Kline,    149    Fed.    912- 

although     it    first     introduced     this  1906  (C.  C.  S.  D.  N.  Y.).    The  use 

method  of  marking  oysters  and  was  of  a  cigar  band  has  been  condemned 

liable  to  lose  some  trade  to  a  com-  as  deceptively  similar  to  one  used  by 

petitor  using  tags  of  different  shape  an  earlier  trader  in  Heusner  v.  Bau- 

and    wording    because    for    a    while  gher,  248  Pa.  St.  536;  94  Atl.  225. 
many  consumers  would  assume  that 


Copying  Bottles  Used  by  Competitor 


251 


multiplied,  but  it  would  be  only  a  reiteration  of  rules  given  else- 
where.^^ Deceptive  imitation  of  the  covers  of  a  book  may  con- 
stitute unfair  competition.^"^" 

§  129.  Copying  Bottles  Used  by  Competitor. — Where  the 
use  of  bottles  of  the  same  shape  as  complainant's  has  been  en- 
joined, there  have  generally  been  other  features  imitated  at  the 
same  time,  but  in  some  cases  a  peculiar  form  and  appearance  de- 
vised for  a  bottle  has  been  the  principal,  if  not  substantially  the 
only,  feature  imitated.  In  Cook  &  Berntheimer  Co.  v.  Ross,^^ 
plaintiff  bottled  whiskey  at  a  distillery,  using  bottles  of  a  peculiar 


^*  Pennsylvania  Salt  Mfg.  Co.  v. 
Myers,  79  Fed.  87-1897  (C.  C.  E. 
D.  Mo.).  Complainant  had  long  sold 
concentrated  lye  in  cylindrical  pack- 
ages, the  wrappers  of  which  were 
white  with  black  margins  and  hori- 
zontal lines,  and  bore  prominently 
the  word  "Saponifier,"  by  which 
for  many  years  complainant  had  dis- 
tinguished its  lye  from  that  of  other 
manufacturers.  Defendant  then  put 
upon  the  market  lye  in  packages  of 
similar  size  and  shape,  the  wrappers 
being  white,  with  similar  black  lines, 
and  bearing  the  word  "Saponifier" 
in  large  letters.  Defendant's  own 
trade  name,  however,  appeared  on 
the  package,  and  the  reading  matter 
in  smaller  type  was  different.  Held 
unfair  competition  on  defendant's 
part.  Centaur  Co.  v.  Killenberger, 
87  Fed.  725-1898  (C.  C.  N.  J.).  In 
connection  with  the  use  of  the  same 
name  "Castoria"  (which  had  be- 
come pubhc  property),  defendant 
used  a  wrapper  of  the  same  color  as 
complainant's,  bearing  an  inscription 
similar  in  type,  arrangement  and 
general  appearance,  and  in  other  fea- 
tures resembling  complainant's.  Held, 
unfair  competition.  The  court  says: 
"Bearing  in  mind  that  the  com- 
plainant's wrapper  was  well  known 
to  the  trade  for  years  before  the 
adoption  of  that  of  the  defendant,  it 


is  impossible,  in  view  of  the  accumu- 
lated resemblances,  to  avoid  the  con- 
clusion that  these  numerous  similari- 
ties were  not  the  result  of  chance, 
but  are  chargeable  to  design"  (id. 
p.  726).  In  National  Biscuit  Co.  v. 
Pacific  Coast  Biscuit  Co.,  83  N.  J.  Eq. 
368-1914,  defendant  used  for  bakery 
products  cartons  similar  in  shape  and 
size  and  color  of  wrappers  to  com- 
plainant's, and  also  bearing  labels 
resembling  in  effect  complainant's 
red  "In-er-seal"  label.  The  colloca- 
tion was  condemned  as  deceptive, 
but  defendant  was  permitted  to  con- 
tinue the  use  of  similar  colors,  sizes 
and  shapes  on  condition  of  differ- 
entiating adequately  the  general 
appearance  of  the  packages.  (See 
descriptions  of  the  cartons,  including 
trade  names  used.)  In  Forster  Mfg. 
Co.  v.  Cutter-Tower  Co.,  215  Mass. 
136  (1913);  101  N.  E.  1083,  boxes  for 
toothpicks  were  found  deceptively 
similar.  In  Neiv  Orleans  Coffee  Co.  v. 
American  Coffee  Co.  of  New  Orleans, 
124  La.  19-1909,  similarity  in  shape 
and  color  of  container  (a  red  cylinder) 
was  not  enough  to  warrant  injunction, 
where  otherwise  there  was  reasonable 
differentiation. 

3^"/.  S.  Ogilvie  Pub.  Co.  v.  Royal 
Pub.  Co.,  241  Pa.  5;  88  Atl.  316. 

"73  Fed.  203-1890  (C.  C.  S.  D. 
N.  Y.). 


252  Dress  .of  Merchandise 

shape  and  bearing  the  distiller's  guaranty  of  purity,  and  through 
extensive  advertising  the  bottles  were  relied  upon  by  purchasers 
to  identify  plaintiff's  whiskey.  Defendants  who  had  been  deal- 
ing in  the  same  whiskey  of  their  own  bottling  adopted  a  bottle 
of  the  same  shape  and  appearance  as  that  of  plaintiff's,  but  with 
entirely  different  labels,  and  the  use  of  such  bottles  by  the  de- 
fendant was  restrained.  In  Chas.  E.  Hires  Co.  v.  Consumers^ 
Co.,^^  the  defendant,  a  bottler,  after  having  for  some  time  used 
distinctive  labels  and  forms  of  bottles  for  its  root  beer  and  other 
beverages,  changed  the  form  of  its  root  beer  bottles  only,  and 
adopted  a  form  identical  with  the  peculiar  and  unusual  form 
long  used  by  complainant,  and  also  changed  its  labels  so  as  to 
resemble  complainant's  somewhat  closely.  Held,  that  it  was 
not  enough  to  enjoin  the  use  of  labels  similar  in  appearance,  and 
that  the  use  of  a  bottle  of  similar  shape  should  also  be  enjoined. 
The  court  says:  "The  court  below  seems  to  have  placed  its  refusal 
to  extend  its  injunction  to  include  the  bottle  used  by  the  defend- 
ant upon  the  notion  that  one  has  the  right,  under  all  circum- 
stances, to  use  any  form  of  bottle  he  may  desire.  *  *  *  An  action 
like  the  present  proceeds  upon  no  such  ground,  but  upon  the  prin- 
ciple that  one  may  not,  by  means  lawful  in  themselves  when  de- 
voted to  a  lawful  end,  perpetrate  a  fraud  upon  the  public,  or 
infringe  the  rights  of  another."  ^^" 

The  Bauer  Company  procured  bottles  to  contain  its  cordial 
to  be  made  in  the  same  ungainly  shape  as  the  bottles  used  by 
the  Carthusian  monks.  The  glass  was  colored  to  correspond 
with  the  color  of  the  cordial  contained  therein,  precisely  as 
was  done  by  them.  Its  labels  corresponded  also  in  color  with 
their  labels,  and  the  arrangement  of  the  lettering  thereon  corre- 
sponds with  that  upon  these  labels.  It  substituted  the  word 
"Chasseurs"  for  "Chartreuse,"  —  a  word  not  dissimilar  in 
sound  and  appearance,  and  likely  to  delude  a  purchaser.     De- 

'8 100  Fed.  809-1900  (C.  C.  A.  7th  caps.    Moxie  Co.  v.  Daoiist,  206  Fed. 

Cir.).    See    also   Gulden    v.    Chance,  434    (C.    C.    A.    1st   Cir.).    But   in 

182  Fed.  303-1910  (C.  C.  A.).  Crystnleid   Water  Co.  v.  Schidtz,  77 

»«°  Where   defendant   had   changed  Misc.  26;  135  N.  Y.  Supp.  273  (1912) 

his  bottle  to  a  shape  very  similar  to  the   labels   and  markings   were   held 

complainant's,    the    color    and    taste  sufficiently  distinctive  to  obviate  an 

of  the  beverage  being  similar,  he  was  objection  to  the  use  of  a  square  bottle 

enjoined,    in   spite   of   differentiation  like   that   of  plaintiff,  who  had   not 

in    marking    on    bottles,    labels    and  originated  the  shape. 


Refilling  Containers  Once  Used  253 

fendant  made  untrue  statements  "putting  forth  a  false  sugges- 
tion that  the  article  was  imported  from  France,  when  in  fact  it 
was  made  in  the  city  of  Chicago."  Said  the  court:  "We  have 
little  patience  with  such  schemes."  ^' 

In  Kronthal  Waters,  Ltd.,  v.  Becker, ^^  complainant  and  its 
predecessors  had  long  sold  in  the  United  States  the  waters  of  a 
German  mineral  spring,  using  a  bottle  with  a  peculiarly  shaped 
blue  neck  label  marked  "Blue  Label,"  and  the  water  was  widely 
known  as  "Blue  Label  Mineral  Water."  Defendant  began  to  use 
for  a  different  mineral  water  a  bottle  of  the  same  shape,  and  size, 
and  color,  with  neck  and  body  labels  of  the  size  and  style  and 
almost  the  same  color,  the  words  on  the  labels,  however,  being 
different,  though  arranged  similarly.  A  preliminary  injunction 
was  granted. 

In  Evans  v.  Von  Laer,^^  the  resemblances  were  (1)  in  the  use 
of  the  name  "Montserrat  Lime  Fruit  Juice,"  (2)  in  the  color  of 
the  labels,  and  (3)  in  the  form  of  the  bottles.  Montserrat  was 
the  island  from  which  both  parties  imported  lime  juice,  and  the 
bottles  were  of  a  shape  common  in  the  lime  juice  trade.  This 
was  not  considered  unfair,  but  defendant  was  enjoined  from  re- 
filling complainant's  bottles. ^'^^     See  §  119. 

§  130.  Refilling  Containers  That  Have  Been  Once  Used. — ■ 
To  buy  goods  of  another  in  bulk,  and  resell  under  truthful  labels 
is  not  usually  unfair.  Plaintiffs  manufactured  a  disinfectant, 
known  as  "Condy's  Fluid,"  and  these  words  were  registered  as 
their  trade-mark.  It  was  generally  sold,  both  at  wholesale  and 
retail,  in  small  bottles.  In  this  instance,  however,  they  had  sold 
a  cask  of  the  fluid  to  defendants,  who  had  bottled  it,  and  were 
selling  the  bottles  labeled  with  the  words  "Condy's  Fluid  (Crim- 
son) warranted  genuine."  It  appeared  that  there  had  been 
some  deterioration  of  the  fluid,  due  to  the  action  upon  it  of  the 
wood  of  the  cask.  Held,  that  defendants  were  within  their 
rights. 

The  court  (Kekewich,  J.)  says:  "A  manufacturer  who  sells  to  a 

"  Bauer  Co.  v.  Order  of  Carthusian         ^^  Other  cases  of  undue  imitation  of 

Monks,  120  Fed.  78-80-1903  (C.  C.  bottles,  including  capsules  and  labels 

A.  7th  Cir.).  are:  Edward  &  John  Burke,  Ltd.,  v. 

38 137  Fed.  649-1905  (C.  C.  E.  D.  Bishop,  175  Fed.  167;  National  Water 

Pa.).  Co.  V.  Hertz,  177  Fed.  607. 

»32  Fed.  153-1887  (C.  C.  Mass.). 


254  Dress  of  Merchandise 

dealer,  in  bulk,  an  article  scnerally  sold  and  used  in  small  quan- 
tities, without  any  restriction  on  its  disposal,  must  be  taken  to 
authorize  the  dealer  to  sell  the  article  in  small  quantities,  as  being 
the  manufacture  of  his  vendor."  ^° 

It  is  unfair,  however,  to  misstate  the  quality  in  reselling. 
The  rights  which  are  acquired  by  the  purchaser  in  bulk  do  not 
permit  him  to  misrepresent  the  quality  of  the  article  to  his  cus- 
tomers. Could  this  be  done  it  would  be  a  means  of  unfairly 
injuring  the  reputation  of  another's  goods. ^^ 

Where  the  defendant  took  the  label  off  of  the  boxes  contain- 
ing plaintiff's  753  grade  pens,  which  was  a  poor  grade,  and  put 
on  one  bearing  number  303,  which  number  plaintiff  used  for  his 
fine  grade  goods,  it  was  held,  that  the  plaintiff  was  defrauded  by 
these  acts  which  caused  destruction  of  confidence  in  his  goods.  ^^ 

Again,  purchasers  in  bulk  will  be  enjoined  from  representing 
that  they  are  the  original  makers,  when  they  resell.  Plaintiffs 
were  noted  manufacturers  of  brandy  in  France,  which  they  sold 
both  in  casks  and  in  bottles,  the  bottled  goods  being  of  superior 
quality.  Defendant  purchased  plaintiffs'  brandy  in  casks,  and 
then  bottled  and  sold  it,  the  bottles,  labels,  etc.,  colorably  unitating 
those  of  plaintiffs,  though  the  label  indicated  in  small  letters  that 
the  bottling  was  done  by  defendant.  Held,  that  defendant 
should  be  enjoined  from  thus  passing  off  on  the  public  plaintiffs' 
second-grade  brandy  as  their  bottled  and  first-grade  goods.^^ 

A  presumption  of  intent  to  pass  off  will  arise  where  one  sells 

*°  Condy   &   Mitchell  v.    Taylor   &  distinctive    labels    correctly    stating 

Co.,  56  L.  T.  N.  S.  891-1887   (Ch.  that  it  was  manufactured  by  com- 

Div.).     See  also  Russia    Cement  Co.  plainant  and  bottled  by  defendants, 

V.    Frauenhar,    133    Fed.    518-1904  but    on    which    they    printed    "Le 

(C.  C.  A.).  Page's    Liquid    Glue."    Held,    that 

•"  Russia    Cement    Co.   v.   Katzcn-  such  use  for  an  inferior  grade,  of  a 

stein,   109  Fed.   314-1901    (C.   C.   S.  trade  name  which  had  become  asso- 

D.    N.   Y.).     Complainant  manufac-  ciated  by  the  pubhc  with  complain- 

tured  glue  well  known  as  "Le  Page's  ant's  best  grade,  was  fraudulent  and 

Glue."     Different  grades  were  desig-  should  be  restrained  as  unfair  com- 

nated  by  some  additional  word;  the  petition. 

highest  grade  was  called  "Le  Page's         ^^Gillot  v.  Kettle,  3  Duer  (N.  Y.), 

Liquid  Glue,"   and  the  lowest   "Le  624-1854. 

Page's  Fish  Head  Glue,"  Defend-  *^  Hemiessy  v.  White,  6  Wyatt, 
ants  purchased  of  complainant  in  Webb  &  A'Beckett  216-1869  (Vic- 
bulk  a  quantity  of  the  latter  grade,  toria);  also  Hennessy  v.  Hogan,  6 
which   they  put  up  in  bottles  with  W.  W.  &  A'B.  225. 


Refilling  Containers  Once  Used  255 

bitters  in  competition  with  Hostetter's  Bitters  which  are  usually 
marketed  in  bottles,  and  puts  his  produce  in  demijohns  marked 
"Host-Style  Bitters,"  and  gives  with  the  demijohn  an  empty 
Hostetter  bottle."^ 

Selling  a  brandy  which  is  not  Hennessy's  out  of  a  bottle 
marked  as  if  containing  Hennessy's  Brandy,  will  be  enjoined. ^^ 

Purchase  of  second-hand  containers,  bottles,  boxes,  and  the 
like,  will  not  give  to  the  buyer  a  right  to  again  use  them  if  such 
use  will  cause  deceit,  and  so  injure  the  original  user  of  the  con- 
tainer. Such  conduct  cannot  fail  to  cause  a  passing  off  of  the 
goods  of  the  second  user  for  those  of  the  first.  These  cases 
usually  concern  refilling  of  bottles,  which  often  are  of  a  pe- 
culiar shape  identified  by  the  public  with  a  particular  brand  of 
goods. 

In  Eckhart  v.  Consolidated  Company, '^^  both  parties  were  flour 
manufacturers.  Eckhart  delivered  flour  to  customers  in  bags 
bearing  the  various  trade-marks  of  the  Consolidated  Company. 
Eckhart  justified  himself  by  saying  that  his  customers  were 
bakers,  and  that  sometimes  by  agreement  they  sold  to  bakers 
large  quantities  of  flour  in  bulk,  and  that  the  bakers  furnished 
bags  to  them  for  the  delivery  of  the  flour;  that  they  also  pur- 
chased from  bakers  second-hand  bags,  among  which  were  bags 
of  the  Consolidated  Company.  They  denied  that  the  public 
was  deceived  or  that  the  bakers  were  deceived  or  that  the  Con- 
solidated Company  were  injured.  Held,  "*  *  *  To  entitle 
a  complainant  to  relief  by  mj unction  in  a  case  like  the  present, 
it  is  not  necessary  to  show  that  the  public  are  or  have  been  ac- 
tually deceived.  The  remedy  by  injunction  is  preventive,  and 
it  is  sufficient  to  show  facts  from  which  the  court  can  deduce  the 
conclusion  that  the  complainant  has  reasonable  ground  to  fear 
that  the  public  and  the  comj)lainant's  customers  may  be  deceived, 
to  the  injury  of  the  complainant;  that  the  use  made  by  the  de- 
fendant of  the  complainant's  marks  is  calculated  to  deceive,  and 
probably  will  deceive  the  public,  to  the  injury  of  the  complainant. 
It  is  obvious  that,  after  appellants  delivered  flour  to  their  cus- 
tomers, the  bakers,  in  bags  marked  and  branded  as  before  stated, 
appellants  would  not,  in  all  cases,  follow  the  bags,  nor  could  they 

**  Hostetter  Co.  v.  Becker,  73  Fed.  *^  Henness^j  v.  Neary,  19  R.  P.  C. 

297-1896  (C.  C.  S.  D.  N.  Y.).  36-1901. 

«  72  111.  App.  70, 


256  Dress  of  Merchandise 

control  the  bakers  in  the  disposition  of  their  flour,  nor  could 
they  have  personal  knowledge  as  to  how  the  bakers  disposed  of 
it,  or  as  to  whether  or  not  they  sold  it,  or  any  of  it,  or  exposed  it 
for  sale  in  the  bags  in  which  it  was  delivered  to  them;  or  repre- 
sented to  their,  the  bakers',  customers,  that  bread  sold  by  them 
was  made  of  flour  of  the  brands  marked  on  the  bags,  showing  the 
bags.  By  delivering  to  the  bakers  their  flour  in  bags  marked  as 
stated,  they  put  it  in  the  power  of  the  bakers  to  dispose  of  the 
flour  as  that  of  appellee."  ^^ 

The  following  cases  deal  with  refilling  of  second-hand  bottles. 
In  Hosteller  Co.  v.  Sommers,^^  complainant  had  long  sold  "Hos- 
tetter's  Stomach  Bitters"  in  bottles  of  a  peculiar  form,  and  its 
product  had  a  wide  reputation.  Defendants  sold  spurious  bitters 
in  bulk,  marking  them  "Stomach  Bitters"  or  "Hostetter's  Bit- 
ters," with  the  intent  (as  the  evidence  was  held  to  establish)  that 
the  purchasers  should  put  them  in  second-hand  Hostetter  bottles, 
and  sell  them  by  the  drink  to  customers  applying  for  "Hostetter's 
Bitters."     Held  unfair  competition. ^'^ 

Hostetter  made  "Hostetter's  Celebrated  Stomach  Bitters," 
these  words  appearing  conspicuously  on  his  label.  Adams  made 
and  sold  bitters  of  their  own  manufacture,  marketing  them  in 
bottles  of  the  same  size  and  shape  and  color  as  plaintiff's,  often 
using  old  bottles  of  the  plaintiff's  on  which  "Hostetter"  was 
blown  in  the  glass,  but  covered  by  defendant's  label.  The  color 
and  general  appearance  of  defendant's  label  was  very  similar  to 
plaintiff's,  and  it  contained  similar  devices  such  as  the  figures  of  a 
horse  and  rider  and  shield.  The  preparation  was  described  in  this 
label  as  "  Clayton  &  Russell's  Celebrated  Stomach  Bitters."  Plain- 
tiff held  entitled  to  an  injunction  and  to  an  accounting  of  profits.^" 

§  131.  Substitution  by  Selling  of  Inferior  Goods  in  Dress  of 

«  Citing  Coats  v.  llulbrook,  2  Sandf.  Marlinoni,  110  Fed.  524-1901  (C.  C. 

Ch.  (N.  Y.)  586.  N.  D.  Cal.).     "Hostetter's  Bitters," 

« 84  Fed.  333-1897  (C.  C.  S.  D.  long  well  known,  were  sold  by  com- 

N.  Y.).  plainant.     Defendant    sold    to    cus- 

*'  See  also  Hostetter  Co.  v.  Brucg-  tomers     inquiring     for    "  Hostetter's 

geman-Reinert  Distilling  Co.,  46  Fed.  Bitters,"  other  bitters  as  "H.  Bitters," 

188-1891  (C.  C.  E.  D.  Mo.);  Saitntel  placing  them  in  complainant's  empty 

Bros.  &  Co.  V.  Hostetter  Co.,  118  Fed.  bottles  which   still  bore  the  original 

257;  55  C.  C.  A.  111.  labels.     Held  a  fraud  on  complainant. 

»« Hostetter  v.  Adams,  10  Fed.  838-  Evans  v.  Von  Laer,  32  Fed.  153; Sawyer 

1882  (C.  C.  S.  D.  N.  Y.);  Hostetter  v.  Crystal  Blue  Co.y.Hubbard,32Fed.388. 


Inferior  Goods  in  Dress  of  Higher  Grade         257 

Goods  of  a  Higher  Grade.  —  ''In  supplying  a  customer  who 
orders  and  expects  to  get  the  goods  of  A.,  the  substitution  of 
any  other  goods  is  illegal,  unless  the  customer  understands  that 
he  is  not  getting  what  he  ordered  and  assents  thereto.  The 
above-mentioned  rule  is  quite  in  accordance  with  the  principle  of 
commercial  honesty."  ^"^ 

The  complainants  manufactured  an  antiseptic  called  "Ar- 
gyrol"  and  defendant,  a  jobbing  druggist,  kept  silver  nuclei- 
nate,  a  more  or  less  similar  but  cheaper  preparation,  which  he 
was  accustomed  to  offer  customers  who  called  for  argyrol;  it  was 
held  to  be  unfair  competition. '^"^ 

It  is  a  clear  infringement  of  trade-mark  to  place  in  a  box  bear- 
ing the  trade-mark  of  one  manufacturer  the  goods  of  another  and 
then  to  offer  or  deliver  the  goods  to  purchasers,  and  the  courts 
will  not  readily  accept  an  explanation  that  such  substitution  was 
accidental. ^^ 

For  a  dealer  to  buy  his  competitor's  inferior  grade  whiskey 
and  sell  it  under  the  name  of  a  high  grade  brand  of  that  com- 
petitor is  unfair. ^^" 

Where  distillers  and  selectors  of  gin  have  for  many  years  put 
up  and  exported  their  gin  in  dark  glass  bottles  of  a  distinctive 
size  and  shape,  having  their  firm  name,  address,  and  registered 
monogram  trade-mark  blown  in  the  glass,  one  who  refills  such 
bottles  with  an  inferior  quality  of  gin,  which  he  sells  without 
notice  that  such  gin  is  not  genuine,  infringes  their  rights,  and 
should  be  restrained,  though  the  refilled  bottles  are  sold  at  a  less 
price  than  the  genuine,  and  do  not  have  such  distiller's  monogram 
paper  label  and  stamp  on  the  cork  (headnote)."^ 

§  132.  Get-up  of  Wagons,  Buildings,  etc.  —  There  may  be  un- 
fair competition  by  any  sort  of  unfair  representation,  —  as  much 
by  the  painting  or  construction  of  a  wagon  or  a  building  as  by 
misuse  of  a  name  or  a  label.     The  following  are  cases  of  this  sort. 

In  Nokes  v.  Mueller,^^  both  the  parties  were  engaged  in  the 
sale  of  milk  in  the  city  of  Springfield,  Illinois,  the  appellee  hav- 

^^  Cutler  on  Passing  Off,  London,          ''"  Teacher  v.  Levy,  23   R.   P.   C. 

1904,  pp.  1-2.  117-1905. 

50^  Barnes  v.  Pierce,  104  Fed.  213-         "^  Van  Hoboken  v.  Mohns  &  Kall- 

1908  (C.  C.  N.  Y.).    See  also  Fair-  enbach,    112    Fed.    528-1901    (C.    C. 

banks  v.  Dunn,  126  Fed.  227.  N.  D.  Cal). 

"  Barnett    v.   Leuchars,    13    L.   T.  "  72  m.  App.  431. 

N.  S.  495-1865. 


258  Dress  of  Merchandise 

ing  been  in  the  business  for  about  sixteen  years.  During  all  this 
time  in  supplying  his  customers  he  used  wagons  which  had  a 
yellow  runnhig  gear,  brown  body,  and  white  top,  with  a  picture 
of  two  cows,  some  trees,  a  running  brook,  some  lilies  and  a  fence, 
and  the  name  "Walnut  Grove  Dairy"  on  them.  Appellant  com- 
menced business  in  Springfield  in  February,  1895,  using  wagons 
with  a  black  top,  and  with  no  name  on  them,  to  deliver  milk  to  his 
customers.  Shortly  before  this  suit,  he  took  them  to  the  shop 
where  appellee  had  his  wagons  painted.  Prior  to  this  time  ap- 
pellant had  had  no  work  done  at  this  shop.  These  wagons  were 
painted  with  running  gear  yellow,  body  brown  and  top  white. 
In  front  of  the  entrance  on  either  side  was  a  picture  of  two  cows, 
a  mountain,  a  Swiss  castle  with  a  cupola,  a  running  brook,  and 
some  lilies.  In  the  rear  of  the  entrance,  and  on  either  side,  on 
the  white  tops,  there  was  in  black  letters  the  name  ' '  Walnut  Park 
Dairy,"  and  under  this  the  name  ''A.  B.  Nokes."  At  this  time 
appellant  was  living  on  what  was  known  as  the  "Walnut  Park 
Farm."  The  court  said:  "The  appellee  in  sixteen  years  has 
established  a  large  profitable  trade,  and  carries  it  on  under  a 
given  name,  and  should  be  protected  from  those  attempting  to 
usurp  his  business.  The  wrong  in  this  case  does  not  consist  in 
appellant  painting  the  running  gear  of  his  wagons  yellow,  or  the 
body  brown,  or  the  top  white,  etc.  The  wrong  is  in  their  accumu- 
lation, not  in  any  one  of  them  alone;  but  all  combined  are  suffi- 
cient to  entitle  appellee  to  an  injunction.  *  *  *  j^  cannot 
be  maintained  that  appellee  so  impoverished  the  vocabulary  of 
the  English  language,  and  so  exhausted  the  taste  and  skill  of  the 
artist  who  lettered  and  painted  the  pictures  on  his  wagons,  that 
appellant  was  compelled  to  imitate  him  so  closely.  We  feel  con- 
strained to  hold  from  the  facts  and  circumstances  in  proof  of  this 
case  that  his  purpose  was  to  usurp  appellee's  business,  and  draw 
some  of  his  customers  to  him,  and  would  thereby  injure  appellee's 
business  he  has  been  so  many  years  in  establishing." 

In  N.  Y.  Cab  Co.  v.  Mooney,^^^  plaintiff  painted  its  cabs  in  a 
peculiar  style  to  distinguish  them  from  other  cabs.  Defendant 
painted  his  in  the  same  manner,  and  used  plaintiff's  trade-mark, 
slightly  changed.  Held,  injunction  rightly  granted;  that  defend- 
ant had  attempted  to  imitate  the  cabs  of  plaintiff  to  secure  trade. 
Weinstock  &  Co.  v.  Marks:'^'^  "The  store  of  plaintiff  was  known 
"  15  Abbott's  New  Cases,  152-1884.  ^*  109  Cal.  529;  30  L.  R.  A.  182. 


Labels  259 

as  'Mechanics'  Store,'  and  established  a  wide  and  honorable 
reputation  as  a  fair  and  reliable  house  with  which  to  deal.  He 
had  erected  a  building  of  peculiar  architecture,  there  being  none 
like  it  in  the  city  of  Sacramento ;  and  defendant  thereupon  erected 
a  store  building,  immediately  adjoining  that  of  plaintiff,  in  every 
respect  of  similar  architecture.  He  refrained  from  placing  any 
sign  in  or  upon  the  building  indicating  the  proprietorship  of  the 
business,  or  designating  it  in  any  way  so  that  it  might  be  dis- 
tinguished from  the  store  of  plaintiff.  Many  of  plaintiff's  cus- 
tomers were  deceived  into  purchasing  goods  in  defendant's  store; 
and  defendant  thus  diverted  from  the  plaintiff  much  of  its  trade. 
The  court  said:  ''The  defendant  had  the  right  to  erect  his  build- 
ing, and  erect  it  in  any  style  of  architecture  his  fancy  might 
dictate.  He  had  the  right  to  erect  it  in  the  particular  locality 
where  it  was  erected.  He  had  a  right  there  to  conduct  a  business 
similar  to  plaintiff's.  He  had  a  right  to  do  all  these  things,  for, 
of  themselves,  they  did  not  offend  against  equity,  but  when  they 
were  done  with  a  fraudulent  intent,  with  the  purpose  of  tolling 
away  plaintiff's  customers  by  a  deception,  a  fraud  is  practiced, 
and  equity  will  do  what  it  can  to  right  the  wrong.  The  decision 
of  the  trial  court  in  effect  ordered  defendant  to  place  signs  both 
inside  and  outside  his  building,  showing  to  the  world  the  pro- 
prietorship thereof.  We  think  this  decree  holds  defendant  to  a 
rule  too  strict,  in  that  it  requires  the  proprietorship  of  the  store 
to  be  shown.  In  this  particular  we  think  the  decree  should  be 
modified  so  as  to  require  that  the  defendant,  in  the  conduct  of 
this  business,  shall  distinguish  his  place  of  business  from  that  in 
which  the  plaintiff  is  carrying  on  its  business,  in  some  mode  or 
form  that  shall  be  a  sufficient  indication  to  the  public  that  it  is  a 
different  place  of  business  from  that  of  the  plaintiff." 

§  133.  Labels.  —  To  discuss  these  cases  as  to  dress,  and  espe- 
cially those  relating  to  labels,  in  the  abstract  is  very  difficult.  A 
court  when  passing  on  such  a  case,  has  before  it,  in  most  instances, 
one  of  each  of  the  articles  in  question.  Description  is  inadequate 
to  convey  an  exact  idea  of  what  information  the  court  obtains 
from  an  examination  of  these  objects.  The  question  is,  what 
will  be  the  court's  opinion  of  the  similarity  in  the  general  effect 
of  the  two  labels,  when  it  compares  them?  ^^ 

To  classify  this  sort  of  cases  is  hardly  possible;  to  deduce  from 
"  Wirtz  V.  Eagle  Bottling  Co.,  50  N.  J.  Eq.  164-1892;  24  Atl.  658. 


260  Dress  of  Merchandise 

Iheiu  any  general  rules  is  equally  difficult.  To  use  the  words 
of  the  Sixth  Circuit  Court  of  Appeals:  ''The  sharp  competition 
in  business  of  recent  years  has  brought  about  a  great  increase  in 
suits  of  this  character,  and  the  decisions  therein  have  rapidly 
multiplied.  It  would  be  a  difficult  task  to  harmonize  them  upon 
the  principles  which  all  of  them  recognize.  This  is  because  of 
such  an  infinite  variety  in  the  facts  and  circumstances  with  which 
the  courts  have  had  to  deal,  —  a  variety  perhaps  not  surpassed  in 
the  field  of  any  other  department  of  judicial  labor.  The  deci- 
sions, however,  do  undoubtedly  help  to  sharpen  the  judgment, 
and  often  shed  a  line  of  light  which  leads  one  to  a  just  conclusion. 
Each  case  depends  upon  its  own  facts  and  circumstances,  and 
must  be  decided  upon  the  application  thereto  of  settled  principles 
which  have  received  no  substantial  modification  in  recent 
years"  ^'^ 

(a)  Labels  7iol  Registered  or  Copyrighted  are  Protected.  —  In 
England,  many  labels  are  never  registered  under  the  Merchandise 
Marks  Acts,  because  of  the  requirements  of  the  patent  office;  and 
while  a  larger  proportion  are  registered  here,  there  are  many 
American  labels  which  are  protected  only  by  the  rules  of  unfair 
competition.  It  is  very  important,  therefore,  that  the  rules  of 
law  as  to  what  is  a  passing  off  of  one  label  for  another  be  definitely 
fixed,  that  those  who  use  them  may  know  the  extent  of  the  pro- 
tection which  the  law  gives  them  when  their  labels  are  not  regis- 
tered, for  it  seems  that  there  is  a  prevailing  idea  that  unless  such 
registration  is  effected,  the  label  is  practically  common  property. 
This  is  very  far  from  the  truth.  It  is  just  as  unfair  to  copy  an 
unregistered  label  if  a  fraud  is  likely  to  result  as  to  copy  one  that 
is  registered. 

(b)  Features  of  an  Action  as  to  a  Label.  —  Where  the  case  in- 
volves the  unfaii-  copying  of  a  label,  it  must  first  be  decided  as  to 
what  the  plaintiff's  right  in  the  label  is.  We  have  considered 
here  only  such  labels  as  are  not  registered.  The  purpose  of  a 
person  who  will  stoop  to  simulate  an  existing  label  is  to  confuse 
his  goods  with  some  brand  which  is  more  widely  known  than  his 
own.  His  aim  is  to  construct  a  label,  which,  when  closely  com- 
pared with  existing  ones,  will  show  differences,  but  which  will  be 
so  similar  to  others,  that  buyers  will  not  detect  them  in  pur- 
chasing.    The  decision  as  to  whether  his  act  is  fraudulent  must, 

^«  Proctor  &  Gamble  Co.  v.  Globe  Refining  Co.,  92  Fed.  357-60-1899. 


Labels  261 

to  a  large  extent,  be  determined  by  the  evidence  of  the  labels 
themselves,  as  placed  before  the  court.  They  are  the  best  evi- 
dence. 

(c)  Kinds  of  Labels.  —  Mr.  Cutler "  divides  labels  into  two 
sorts,  (1)  those  "in  which  the  most  prominent  or  salient  feature 
is  some  device  which  may  or  may  not  be  a  registered  trade-mark, 
or  some  catchword  or  catchwords  which  the  owner  claims  as  his 
trade  name;"  and  (2)  those  in  which  the  prominent  or  salient 
feature  ''is  the  general  appearance,  or  as  it  is  called,  the  'get-up' 
of  the  label."  In  the  first  class,  no  doubt,  Mr.  Cutler  would 
include  those  labels  in  which  the  name  is  the  important  feature. 

(d)  Classification  of  Label  Cases.  —  As  has  been  noted,  it  is 
impracticable,  if  not  impossible,  to  classify  label  cases  satisfac- 
torily, on  a  basis  of  principles  of  law,  for  the  principles  are  the 
same  in  all  cases.  The  difficulty  is  in  applying  them  to  various 
conditions.  Consequently,  the  cases  which  are  deemed  important 
as  showing  such  application  of  law  to  fact,  are  given  in  the  fol- 
lowing pages,  without  comment  usually,  but  roughly  classified  as 
follows : 

I.  Cases  in  which  the  name  is  the  principal  feature  of  the  label. 

II.  Cases  involving  labels  in  which  the  salient  feature  is  some 
device  or  catchword,  which  is  copied  or  simulated. 

III.  Cases  in  which  there  is  no  salient  feature,  but  the  whole 
get-up,  including  the  name,  is  unfair. 

IV.  Cases  involving  general  resemblance  and  also  a  likeness 
in  the  names  used  which  does  not,  however,  constitute  unfair 
competition. 

V.  Cases  involving  no  similarity  in  name,  but  a  resemblance 
in  general  appearance  amounting  to  unfair  competition. 

VI .  Cases  not  involving  a  name,  in  which  the  general  likeness 
in  get-up  is  not  close  enough  to  be  unfair. 

/.  Simulation  of  Labels  in  Which  a  Name  is  the  Principal  Fea- 
ture. —  The  cases' here  mentioned  are  in  many  instances  the  same 
in  character  as  those  cited  in  the  chapter  on  "Trade  Names  — 
General  Principles,"  under  the  heading  of  "Idem  Sonans." 
There  are  also  many  instances  in  the  reports  of  unitation  of 
names,  not  with  the  purpose  of  making  the  sound  the  same,  but 
of  creating  such  likeness  as  will  catch  the  eye.  The  principles 
are  the  same  in  both  instances.  Many  cases  involving  names  of 
"  Passing  Off,  London,  1904,  pp.  23-24. 


262 


Dress  of  Merchandise 


this  sort  are  found  in  the  chapters  on  "Family  Names,"  "Cor- 
porate Names,"  "Geographical  Names,"  "Trade  Names,"  — 
General  Principles,"  "Evidence."  In  a  note  below  are  given 
cases  illustrating  this  distinction.^^  . 


^*  See  chapter  on  "  Trade  Names  — 
General  Principles,"  title  "  Idem  So- 
nans."  Ruyal  Baking  Powder  Co.  v. 
Davis,  26  Fed.  293-1885  (C.  C.  E. 
D.  Mich.).  The  words  "Coral  Bak- 
ing Powder"  have  been  held  to  be 
in  themselves  no  infringement  of 
"Royal  Baking  Powder,"  yet  their 
use  in  connection  with  labels  bearing 
a  general  resemblance  to  those  of 
the  Royal  Co.  in  colors,  ornamenta- 
tion and  otherwise,  was  enjoined. 
Sawyer  v.  Kellogg,  7  Fed.  720- 
1881  (C.  C.  N.  J.).  Complainant's 
bottles  of  bluing  bore  a  blue  label, 
containing  in  several  compartments, 
inscriptions  in  silver  bronze  letters, 
one  of  which  was  the  name  of  the 
article,  "Sawyer's  Crystal  Blue  and 
Safety  Box."  Defendant  on  the 
order  of  parties  for  whom  he  made 
bluing,  used  a  label  of  the  same  size, 
color  and  type,  di^dded  into  com- 
partments corresponding  to  those  on 
complainant's  label,  one  of  which 
contained  the  name  of  the  article, 
"Sawin's  Soluble  Blue  and  Pepper 
Box."  Held,  that  complainant  was 
entitled  to  an  injunction  against  the 
use  of  this  label,  and  to  an  account- 
ing of  profits  in  order  to  ascertain 
damages.  Clark  v.  Clark,  25  Barb. 
76-1857.  Plaintiff  manufactured 
thread  at  Glasgow,  and  used  as  a 
trade-mark  four  concentric  circles,  of 
different  colors,  containing  in  the 
inner  circle  the  number  of  the  cotton, 
in  the  next,  "J.  Clark,  Jr.,  &  Co., 
Mile  End,  Glasgow,"  in  the  next  "Six 
cord  cabled  thread  warr'd  200 
yards,"  and  in  the  outer  circle  "Sole 


agent,  Wm.  Whiteright,  New  York." 
Defendant,  the  New  York  agent  of 
J.  &  J.  Clark  &  Co.,  manufacturers 
of  similar  thread  at  Paisley,  used  a 
mark  closely  resemjjling  plaintiff's  in 
appearance,  there  being  four  concen- 
tric circles  of  the  same  size  and  same 
colors,  and  the  details  of  arrange- 
ment being  the  same.  The  inner  cir- 
cle had  the  same  number,  the  next 
the  words  "Clark  &  Co.,  Seed  Hill, 
Paisley,"  the  third  "Six  Cord  Cabled 
thread  warr'd  200  yards,"  and  the 
outer  circle  "Sole  agent,  George 
Clark,  New  York."  This  showed  an 
intention  to  imitate  and  a  probability 
of  deception  and  the  defendant  was 
required  to  substitute  for  "Clark  & 
Co."  the  firm  name  "J.  &  J.  Clark 
&  Co."  and  to  change  the  order  of 
colors  and  the  style  of  lettering  and 
figuring.  Conrad  v.  Uhrig  Brewing 
Co.,  8  Mo.  App.  277-1880.  Conrad, 
a  brewer,  for  two  years  prior  to  this 
suit,  caused  beer  to  be  made  for  him 
by  a  process  called  the  "Budweiser 
Process."  Budweiss  is  a  small  Bohe- 
mian city  where  good  beer  is  made. 
Conrad  placed  upon  this  beer,  a  label 
in  the  shape  of  a  necktie  in  the 
center  of  which  were  three  C's  with 
barley  and  hop  leaves,  bearing  these 
words:  "We  guarantee  that  this  beer 
is  brewed  especially  for  our  own 
trade,  according  to  the  Budweiser 
process,  of  the  best  Saazar  hops  and 
Bohemian  barley,  and  warranted  to 
keep  in  any  cUmate.  Take  notice 
that  aU  our  corks  are  burned  with 
our  trade-mark,  etc."  After  his  beer 
had  made  a  reputation  for  itself,  de- 


Labels  263 

II.  Cases  Involving  Labels  m  Which  the  Salient  Feature  is  a 
Device  or  Catchword  which  is  Copied  or  Simulated.  —  He  who 
claims  a  label  must  establish  to  the  court's  satisfaction,  that  the 
public  has  associated  with  the  distinctive  or  salient  features  of  his 
label  the  brand  of  goods  he  puts  on  the  market  under  that  label. 
Until  he  does  that,  he  has  no  ground  for  claiming  the  right  to 
restrain  another  person  from  using  the  device,  or  mark,  or  name 
which  appears  on  his  label.  If  the  feature  relied  on  be  a  device 
or  symbol,  even  the  names  used  may  be  entirely  different  and  it 
still  be  shown  that  there  is  a  distinct  connection  between  this 
device,  which  both  parties  are  using,  and  the  plaintiff's  goods. 
So,  also,  where  the  name  is  the  distinctive  feature,  the  get-up 
otherwise  may  be  very  different.  In  Powell  v.  Birmingham 
Vinegar  Brewery  Co.  (supra),  the  two  labels  were  entirely  differ- 
ent except  that  both  bore  prominently  the  words  "Yorkshire 
Relish." 

This  salient  feature  need  not  be  exactly  copied;  it  may  be  an 
approximation.  In  Stephens  v.  Peel,^^  plaintiffs  and  their  pred- 
ecessors had  long  sold  ink  kaown  as  "Stephens'  Blue  Black," 
and  these  words  appeared  prominently  in  large,  white  capitals 
on  labels  of  peculiar  pattern  as  to  coloring  and  arrangement  of 
words.  Defendant  then  put  on  the  market  ink  in  bottles  bearing 
labels  on  which  appeared  prominently  in  large,  white  capitals, 
"Steelpens  Blue  Black,"  and  in  which  the  coloring  and  arrange- 
ments of  the  other  words  and  the  devices  on  the  label  closely  re- 
sembled plaintiff's.  This  was  a  colorable  imitation,  and  an  in- 
junction was  granted. 

The  National  Biscuit  Company  attached  to  the  ends  of  cartons 
a  trade-mark,  consisting  of  the  words  "In-er  Seal,"  printed  in 
white  letters  wuth  a  fanciful  design  on  a  vivid  red  label  with 
clipped  corners.  Defendant  began  selling  biscuits  in  packages 
of  the  same  size  and  sometimes  of  similar  color,  shape  and  ap- 
pearance, all  having  on  the  ends,  in  white  letters  on  labels  of  the 
same  shade  of  red,  with  clipped  corners,  the  trade-mark  "Fac- 

fendant  procured  from  the  same  en-  with    our    trade-mark.    Beware    of 

graver  a  label  of  the  same  size,  shape  imitation.        The    world    renowned 

and  general  appearance  and  having  Budweiser  lager-beer."    These  labels 

the  same  pecuUar  devices  of  a  crown  were  used  for  his  beer,   which  was 

and  wreaths.     It  bore  three  letter  B's  inferior    to    plaintiff's    and    cheaper, 

and     the     following     words:     "Cau-  Injunction  granted, 

tion!    See  that  our  corks  are  burned  *»  16  L.  T.  N.  S.  145-1867. 


264  Dress  of  Merchandise 

tory  Seal,"  with  a  fanciful  design.  The  defendant  was  enjoined 
from  using  this  trade-mark  and  label  without  a  clearer  differ- 
entiation of  the  same  from  complainant's.*^" 

A  brewer  used  for  his  bottled  beer  a  label  with  a  conspicuous 
diagonal  red  band,  bearing  in  white  letters  the  name  of  the  beer. 
Another  brewer,  in  the  same  city,  adopted  a  diagonal  red  label, 
the  general  effect  of  which  resembled  that  of  the  former,  and  did 
not  satisfactorily  explain  how  he  came  to  adopt  this  particular 
label.     Injunction  against  him.''^ 

Plaintiff  made  liquid  bluing,  marked  as  "Sawyer's  Crystal 
Bluing."  An  employee  of  his  began  the  manufacture  of  liquid 
bluing;  his  labels  did  not  resemble  complainant's  and  the  name 
was  quite  different,  but  he  used  bottles  of  the  same  size  and  shape, 
with  a  bright  metallic  perforated  cap  closely  resembling  that  on 
complainant's  bottles.     Injunction  granted.''^ 

///.  Cases  in  Which  There  is  no  Salient  Feature,  hut  the  Whole 
Get-up,  Including  the  Name,  is  Unfair.  —  The  largest  class  of 
cases  under  the  head  of  labels  is  the  second  mentioned  by  Mr. 
Cutler,  in  which  there  is  no  one  determining  feature,  and  in  which 
it  is  often  hardly  possible  to  single  out  particular  characteristics 
which  may  be  termed  salient  or  conspicuous,  but  which  show  re- 
semblance in  many  details,  producing  a  similarity  of  general 
effect. 

It  will  be  seen  in  the  chapter  on  "Intent"  that  an  intent 
to  deceive  and  defraud  may  be  presumed  from  facts  which  seem 
to  the  court  to  show  that  the  defendant's  acts  will  cause  loss  of 
business  to  the  plaintiff,  or  deceit  of  purchasers.  Various  au- 
thorities have  held  that  such  an  intent  may  be  presumed  from 
facts  showing  that  one  article  or  its  label  or  general  get-up  is  an 
approximation  of  that  of  another  .^^ 

Where  a  company  has  worked  through  years  to  build  up  a 
trade,  and  the  public  has  become  acquainted  with  its  goods,  it  is 
entitled  to  demand  protection  against  a  copying  of  its  general 
get-up.  A  purchaser  is  not  bound  to  be  painstaking  in  selecting 
his  purchase.     Although  he  has  the  opportunity  of  comparing 

""  Ohio  Baking  Co.  v.  N'ational  Bis-  ^^  Saicyer  Crystal  Blue  Co.  v.  Hub- 

cuit  Co.,   127  Fed.   116-1904   (C.  C.  bard,  ,32  Fed.  388-1887  (C.  C.  Mass.). 

A.  6th  Cir.).  See  7  Fed.  720. 

*^  Anheuser-Busch    Brew.    Assn.   v.  *'  Devlin  v.  McLeod,  135  Fed.  165- 

Clarke,  20  Fed.  410-1886  (C.  C.  Md.).  1904  (C.  C.  W.  D.  N.  Y.). 


Labels  265 

the  labels  and  wTappings  of  various  articles,  he  is  not  bound  to  do 
so.  If  the  commodity  he  desires  costs  very  little  he  is  still  more 
likely  to  gi\'e  little  heed  to  what  he  gets  and  courts  will  take 
judicial  notice  of  this  fact.  If  there  are  but  slight  and  minor 
differences  between  the  article  he  knows  from  having  used  it 
before,  and  some  competing  article,  so  that  he  cannot  easily  dis- 
tinguish them,  he  may  be  deceived  and  buy  the  article  he  did  not 
intend  to  buy.  fWhere  the  differences  are  less  easily  distinguished 
than  the  likenesses  —  where  the  ordinary  purchaser  would  be 
more  likely  to  believe  the  two  articles  were  the  same,  than  to 
believe  they  were  different  —  it  is  a  case  of  unfair  competition,  j 
For  instance,  in  Sterling  Remedy  Company  v.  Gorey,^*  the  com- 
plainant sold  octagonal  cascara  tablets  marked  "C.  C.  C,"  and 
on  the  boxes  were  the  words  "Cascarets,  Candy  Cathartic,"  and 
other  matter.  Defendant's  tablets  were  exactly  like  com- 
plainant's, except  for  one  letter  ''G,"  and  the  boxes,  which  were 
of  the  same  shape  and  nearly  the  same  color,  bore  the  word  "  Cas- 
cara"  and  (it  seems)  also  the  words  ''Candy  Cathartic."  There 
were,  however,  dissimilarities  sufficient  to  make  it  easy,  on  com- 
paring the  boxes,  to  distinguish  them.  The  resemblance  was 
considered  more  observable  to  an  ordinary  purchaser  than  the 
differences  and  defendant  was  charged  with  unfair  competition. 

It  often  happens  that  the  imitation  of  any  particular  detail, 
including  the  name  of  the  offending  article,  could  not  have  been 
interfered  with,  yet  the  imitation  of  several  features,  resulting  in 
a  similar  general  effect,  has  been  considered  unfair  competition.^^ 

Sperry  &  Co.  v.  Percival  Milling  Co.,  81  Cal.  252-1889;  22  Pac.  651.  Plaintiff 
had  for  some  time  used  "Germea"  as  a  trade  name  or  brand  for  a  kind  of  meal 
used  for  mush.  Defendant  subsequently  placed  on  the  market  a  similar  article 
marked  "Golden  Eagle  Germ."  It  was  put  up  in  packages  of  the  same  size, 
shape,  and  color  as  plaintiff's  and  had  attached  labels  of  the  same  size  and  shape, 
the  words  and  pictures  on  the  labels  being  in  many  cases  similar,  of  the  same 
colors,  and  similarly  arranged.  The  differences  consisted  in  the  trade  name,  the 
name  of  the  proprietor  and  in  certain  minor  details.  Plaintiff  held  entitled  to 
injunction.  Rains  &  Sons  v.  White,  Haucke  &  Co.,  107  Ky.  114-1899;  52  S.  W. 
970.  In  1889  plaintiff  put  out  a  tobacco  in  12-pound  boxes,  156  twists  to  the 
box  or  13  twists  to  the  pound,  and  it  soon  acquired  a  reputation  under  the  name 
"Rainbow  Twist."  Defendant  began  in  1S93  to  put  tobacco  in  same  12-pound 
boxes,  13  twists  to  the  pound,  156  twists  to  the  box.     They  used  same  wreaths  as 

'*  110  Fed.  372-1901  (C.  C.  N.  D.  <^' Fischer  v.  Blank,  138  N.  Y.  244- 

Oliio).  1893;  33  N.  E.  1040. 


266  Dress  of  Merchandise 

the  plaintiff  on  their  label,  because  the  printer  had  them  on  hand,  and  marked 
the  label  "The  Best  Twist,"  etc.  The  general  arrangement  of  the  words 
was  similar  on  both  labels,  "*  *  *  so  that,  when  the  appellees  had  gotten 
a  box  of  twist  tobacco  on  the  shelf  of  the  retail  dealer  the  result  was  that  they 
had  duplicated  the  'Rainbow  Twist'  of  their  rivals  in  all  respects  except  as  to 
the  words  on  the  label.  Even  the  arrangement,  size  and  style  of  the  printing 
were  the  same;  the  departure  from  the  appellant's  brand  consisting  solely  in 
substituting  the  word  'Best'  for  the  word  'Rainbow,'  and  the  words  'White, 
Haucke  &  Co.,'  for  the  words  'J.  H.  Rains  &  Sons.'  The  result  was  confusing 
on  the  market,  and  purchasers  who  wanted  'Rainbow  Twist'  were  given  the 
'Best  Twist'  to  the  pecuniary  disadvantage  of  the  appellants  and  the  annoy- 
ance of  the  deceived  tobacco  chewer"  (id.  p.  116).  Held,  unfair  competition. 
Parlett  v.  Guggenheimer,  G7  Md.  542-1887;  10  Atl.  81.  Plaintiffs  sold  tobacco 
marked  and  known  as  "Golden  Crown"  and  further  distinguished  by  four  tin 
tags  of  a  special  description.  Defendants  sold  tobacco  marked  "Golden  Chain" 
in  packages  bearing  similar  tin  tags  and  resembling  plaintiffs'  in  dress  and  ap)- 
pearance.  Plaintiffs  were  held  entitled  to  an  injunction  and  accounting.  It  was 
set  up  in  defense  that  plaintiffs  had  no  right  to  use  the  words  "Golden  Crown," 
as  they  had  long  been  used  as  a  trade-mark  to  one  Palmer.  It  appeared,  however, 
that  Palmer  had,  in  a  Pennsylvania  court,  been  refused  protection  for  the  trade- 
mark claimed  by  him,  on  the  ground  that  he  falsely  represented  his  goods  to 
be  made  in  Havana.  Held,  that  the  defense  was  unavailing.  Centaur  Co.  v. 
Link,  62  N.  J.  Eq.  147-1901;  49  Atl.  828.  The  resemblance  in  dress  is  thus 
described  in  the  opinion:  "The  compound  of  the  Link  Drug  Company  is  put  up 
in  two-ounce  paneled  bottles,  so  nearly  similar  in  size  and  appearance  with  those 
of  complainant's  as  to  present  no  substantial  difference.  The  word  'Castoria' 
is  printed  in  similar  and  conspicuous  type,  the  only  difference  being  the  first 
and  last  letters,  —  a  difference  not  calculated  to  attract  attention  —  and  in  the 
fact  that  the  name  upon  complainant's  bottle  is  slightly  curved,  and  in  the  de- 
fendant's bottle  straight  —  this  also  being  a  difference  which  would  not  arouse 
the  attention  of  an  unsuspecting  purchaser.  Upon  both  is  the  formula  of  Dr. 
Pitcher.  Over  the  complainant's  formula  are  the  words  'Receipt  of  old  Dr. 
Pitcher,'  in  small  type,  and  over  the  formula  of  the  Link  Drug  Company  bottles 
'Formula  of  Old  Dr.  Pitcher,'  in  large  letters.  The  remainder  of  the  printed 
matter  differs  in  form  and  somewhat  in  substance,  and  upon  the  defendant's 
label  is  the  picture  of  a  bee-hive,  with  the  words  '  trade '  upon  one  side  of  it  and 
'mark'  upon  the  other.  On  the  bottom  of  the  complainant's  label  is  the  name 
of  '  Charles  H.  Fletcher,'  in  small  letters.  Upon  the  label  of  the  Link  Company, 
in  large  letters,  are  the  words  'C.  W.  Link  Drug  Co.'  The  label  of  the  complain- 
ant is  made  of  shghtly  tinted  white  paper,  and  that  of  the  Link  Drug  Company 
of  white  paper;  but  unless  placed  together,  the  difference  in  color  is  not  per- 
ceptible" (id.  p.  150).  Injunction  granted.  Taendslicksfahriks  Akticbolagat 
Vulcan  V.  Mijers,  139  N.  Y.  364-1893;  34  N.  E.  904.  A  Swedish  corporation 
made  matches  which  it  put  up  in  boxes  bearing  the  trade-mark  "The  Vulcan," 
in  red  letters  over  a  globe,  on  each  side  of  which  were  representations  of  various 
medals.  The  labels  also  bore  the  words  "Damp  Proof,"  "Trade  Mark,"  and 
"Paraffin  Matches."    A  competitor  later  began  to  put  up  matches  in  boxes 


Labels  267 

of  the  same  size  having  the  same  general  appearance,  with  a  label  bearing  in  red 
letters  of  the  same  style  the  word  "Vulture,"  a  picture  of  a  vulture  with  out- 
spread wings  and  a  facsimile  of  the  medals  of  the  Swedish  company;  also  the 
words  "Damp  Proof,"  "Trade  Mark"  and  "Paraffin  Matches"  arranged  in 
the  same  way  as  upon  the  plaintiff's  boxes.  The  court  said:  "The  similarity 
between  the  names  employed  and  the  devices  used;  the  identity  of  the  medals 
represented  and  the  correspondence  of  size,  color  and  general  appearance,  when 
combined  upon  the  wrapper  of  a  box,  are  so  close  and  striking  that  an  intending 
purchaser  of  the  plaintiff's  goods  would  be  likely  to  be  imposed  upon  if  the 
matches  sold  by  defendant  in  these  packages  should  be  offered.  While  competi- 
tion is  essential  to  the  life  of  commerce  and  is  the  consumer's  main  defense 
against  extortion,  it  should  be  fair  and  honest,  and  the  manufacturer  who  pro- 
duces an  article  of  recognized  excellence,  in  the  market,  and  stamps  it  with  the 
insignia  of  his  industry,  integrity  and  skill,  makes  his  trade-mark  a  part  of  his 
capital  in  business,  and  thus  acquires  a  property  right  in  it,  which  a  court  of 
equity  will  protect  against  all  forms  of  commercial  piracy"  (id.  p.  367).  Opper- 
mann  v.  Waterman,  94  Wis.  583-1896;  69  N.  W.  569.  Defendant's  packages 
of  dyes  closely  resembled  plaintiff's  in  size,  shape  and  general  appearance; 
defendant's  labels  were  similar  to  the  peculiar  labels  used  by  plaintiff,  in  the 
colors  of  the  ink  and  arrangement  of  printed  matter.  Plaintiff's  dyes  were 
known  as  "German  Household  Dyes,"  and  defendants  called  theirs  "Excellent 
German  Household  Dyes."  Held,  unfair  competition.  Bickmore  Gall  Cure  Co. 
V.  Karns,  134  Fed.  833-1905  (C.  C.  A.  3d  Cir.).  The  principal  features  of  re- 
semblance were  the  use  of  the  two  phrases  "Be  sure  to  work  the  horse"  and 
"always  work  the  horse  while  using  the  cure;"  the  use  of  two  pictures,  one  of  a 
single  working  horse,  the  other  of  four  working  horses;  the  use  of  boxes  sub- 
stantially the  same  size  and  of  exactly  the  same  shape,  both  being  of  yellow  or 
yellowish  color.  "The  true  question  is  not  whether  the  boxes,  circulars,  ad- 
vertisements and  directions  of  the  appellees  are,  in  their  details,  the  same,  or 
nearly  the  same,  as  those  of  the  appellant,  but  whether  the  general  effect  pro- 
duced by  those  of  the  appellees  is  such  as  would  be  likely  to  lead  ordinary  pur- 
chasers to  accept  their  gall  cure  as  being  that  of  the  appellant"  (id.  p.  835). 
It  should  be  noted  that  the  earlier  trader's  medicine  had  come  to  be  popularly 
known  as  the  "Work  the  Horse"  Cure.  In  Devlin  v.  McLeod,  135  Fed.  164- 
1904  [C.  C.  W.  D.  N.  Y.]  it  was  said  that  while  the  words  "Toothache  Gum" 
are  not  subject  to  exclusive  appropriation  as  a  trade-mark,  yet  their  use  by  de- 
fendant in  connection  with  the  use  of  labels  in  many  ways  similar  to  those  of 
complainant,  and  of  packages  of  about  the  same  size,  called  for  injunctive  re- 
lief. Kostering  v.  Seattle  Brewing  &  Malting  Co.,  116  Fed.  620-1902  (C.  C.  A. 
9th  Cir.).  Complainant  sold  beer  called  "  Rainier  Beer,"  with  a  label  of  peculiar 
coloring  and  design.  Defendant  sold  "Rhinegold  Beer,"  in  bottles  of  the  same 
color  and  shape,  and  with  a  label  of  the  same  size,  the  same  peculiar  coloring, 
and  similar  in  arrangement  and  in  most  of  its  features,  the  differences  being 
mainly  in  the  words  and  the  landscape  views.     This  was  unfair. 

Enoch  Morgan's  Sons  Co.  v.  Whittier-Cobtirn  Co.,  118  Fed.  657-1902  (C.  C. 
N.  D.  Cal.).  Complainant  and  its  predecessor  had  long  manufactured  a  soap 
under  the  trade-mark  and  name  "Sapolio,"  and  had  put  it  up  in  a  peculiar 


268  Dress  of  Merchandise 

style  of  package.  Defendant  had  been  the  agent  of  complainant,  and  after  the 
termination  of  its  agency  began  to  sell  soap  of  the  same  size  and  shape  as  com- 
plainant's, and  marked  "W.  C.  Co.'s  Sapho,"  whereas  complainant's  was  marked 
"E.  Morgan's  Sons  N.  Y.,  Sapolio."  There  was  considerable  resemblance  as  to 
color  and  general  appearance  between  defendant's  wrapper  and  label  and  com- 
plainant's. Held,  unfair  competition.  Moxie  Nerve  Food  Co.  v.  Baumhach,  32 
Fed.  205-1887  (C.  C.  E.  D.  Tex.).  Complainant  used  a  trade-mark  con- 
sisting of  the  word  "Moxie,"  with  a  label  bearing  a  certain  design  and  other 
descriptive  words.  lie  sold  a  beverage  known  as  "Moxie  Nerve  Food,"  put 
up  in  a  champagne  bottle  with  a  light-brown  wrapper.  Defendant  afterward 
began  to  sell  a  beverage  of  similar  appearance  and  taste,  put  up  in  a  champagne 
bottle,  with  a  lal)el  and  wrapper  sufficiently  resembling  complainant's  to  de- 
ceive the  unwary  purchaser.  This  bottle  was  marked  "Standard  Nerve  Food." 
Injunction  issued.  Jennings  v.  Johnson,  37  Fed.  364-1888  (C.  C.  Me.). 
Plaintiff  and  his  predecessors  had  long  sold  "Johnson's  Anodyne  Liniment" 
in  bottles  with  blue  wrappers  and  labels  bearing  a  facsimile  of  the  name  "A. 
Johnson."  Defendant  then  put  on  the  market  what  he  also  called  "Johnson's 
Anodyne  Liniment,"  in  bottles  of  the  same  size,  with  a  similar  blue  wrapper  and 
a  label  of  similar  appearance,  though  of  slightly  differing  color,  with  a  facsimile  of 
the  name  "F.  E.  Johnson."  There  was  proof  of  actual  deception.  Injunction 
granted.  Myers  v.  Theller,  38  Fed.  607-1889  (C.  C.  S.  D.  N.  Y.).  Com- 
plainants made  and  sold,  in  bottles  of  peculiar  shape,  "Hostetter's  Stomach 
Bitters."  The  label  bore  a  representation  of  St.  George  and  the  dragon,  a 
black  shield,  the  words  "Hostetter's  Celebrated  Stomach  Bitters,"  and  some 
additional  matter.  Defendants  put  upon  the  market  an  article  of  their  own,  in 
bottles  of  the  same  color  and  peculiar  shape  as  complainant's,  and  bottles  with 
the  words  "Theller's  Celebrated  Stomach  Bitters,"  a  monogram  of  the  letters 
"A.  T."  in  place  of  St.  George  and  the  dragon,  and  a  black  shield  resembhng 
that  on  complainant's.  Otherwise  there  were  resemblances  and  also  points  of 
difference  between  the  labels.  Held,  unfair  competition.  Klotz  v.  Hecht,  73 
Fed.  822-1896  (C.  C.  S.  D.  N.  Y.).  Complainant  was  the  successor  of  a  famous 
Parisian  manufacturer  of  toilet  articles,  and  continued  the  business  under  the 
old  trade-names  "Ed.  Pinaud"  and  "Parfumerie  Ed.  Pinaud."  Defendant, 
who  had  been  employed  by  complainant,  then  began  to  sell  -similar  goods, 
which  although  made  in  the  United  States,  bore  labels  in  French,  and  were 
put  up  as  to  give  the  impression  that  the  goods  were  French.  One  label  indi- 
cated that  the  contents  were  prepared  by  "M.  Hecht,  lately  with"  (those 
words  being  in  French)  "Parfumerie  Ed.  Pinaud,  Paris."  There  was  also 
blown  into  the  glass  a  design  resembling  one  blown  into  complainant's  bottles. 
An  injunction  was  granted.  C.  F.  Simmons  Medicine  Co.  v.  Simmons,  81  Fed. 
163-1897  (C.  C.  Ark.).  Defendant  made  and  sold  a  medicine  under  a  name 
similar  to  that  of  complainant's  medicine,  including  the  name  of  his  father,  the 
inventor,  who  had  transferred  all  rights  in  the  medicine  to  the  predecessor  of 
complainant.  Defendant  advertised  himself  as  the  son  of  the  inventor,  and  as 
having  been  brought  up  in  his  la})oratory.  His  packages  resembled  complain- 
ant's in  various  waj's,  such  as  the  portrait,  autograph  signature,  arrangement 
of  words,  and  directions  for  using.    The  medicine  was  used  largely  by  ignorant 


Labels  269 

and  illiterate  persons.  Held,  unfair  competition.  Franck  v.  Frank  Chicory  Co., 
95  Fed.  SlS-1899  (C.  C.  E.  D.  Wis.).  Complainants  were  the  American  branch 
of  a  German  firm  that  had  long  made  and  sold  chicory  as  a  substitute  for  coffee. 
Their  product,  put  up  in  red  packages  of  cylindrical  shape,  was  somewhat  pop- 
ular in  the  vicinity  of  Milwaukee.  Defendant's  company  was  afterward  or- 
ganized and  made  and  sold,  in  the  neighborhood  of  Milwaukee,  a  similar  product, 
put  up  in  packages  of  similar  shape  and  color,  with  labels  of  similar  design, 
bearing  the  name  "Frank  Chicory  Co."  The  name  Frank  was  afterward  with- 
drawn. Held,  unfair  competition.  Injunction  granted  against  the  use  of  the 
same  color  as  well  as  against  the  use  of  a  similar  label  and  the  name  "Frank." 
Liebig's  Extract  of  Meat  Co.,  Ltd.,  v.  Libby,  McNeill  &  Libby,  103  Fed.  87-1900 
(C.  C.  N.  D.  111.).  The  complainant  had  possessed  a  trade  in  its  product  for  more 
than  thirty  years,  and  for  many  years  its  trade  had  been  of  great  extent,  aided 
by  large  expenditures  for  advertising.  The  defendant  entered  the  market  with 
an  extract  well  distinguished  in  the  marking  and  color  of  the  package,  but  sub- 
sequently adopted  a  dress  for  its  goods  which  clearly  simulated  that  of  the  com- 
plainant, and  was  calculated  to  deceive.  It  assumed  the  fictitious  title  of "  Liebig 
Fluid  Beef  Co."  with  a  label  stamped  in  blue  "J.  Walker,"  and  the  color  and 
general  appearances  of  the  packages  closely  resembling  that  of  complainant. 
Held,  that  taking  all  the  circumstances,  it  was  evident  that  deception  was  both 
intended  and  liable  to  arise  in  palming  off  the  goods  upon  ultimate  purchasers 
as  those  of  the  complainant.  In  Haslirighuis  v.  P.  Harrington  Sons,  237  Fed.  301 
(D.  C.  N.  H.  1916)  (7  Trade-mark  Rep.  4)  plaintiff's  label  was  imitated  in  its 
peculiar  shape,  that  of  a  heart  in  its  salient  word,  "Geneva,"  and  in  certain 
devices  and  the  arrangement  of  the  reading  matter,  resulting  in  an  almost 
identical  general  appearance.  Other  examples  of  collocations  found  deceptively 
imitative  are  found  in  Wm.  Wrigley,  Jr.,  &  Co.  v.  L.  P.  Larsen,  Jr.,  Co.,  195  Fed. 
568  (Spearmint  and  Peptomint  packages) ;  Luyties  Bros.  v.  E.  Zimmermann  & 
Co.,  149  A.  D.  (N.  Y.)  542;  Mellwood  Distillery  Co.  v.  Harper,  167  Fed.  389  (re- 
semblance of  appearance  of  label,  in  connection  with  similar  name  and  misleading 
statements);  Grocers'  Supply  Co.  v.  Dupuis,  219  Mass.  576  (107  N.  E.  389) 
(red  label  of  distinctive  design  imitated,  as  well  as  trade  name  "Cormond 
Water,"  in  which  there  was  no  exclusive  right). 

IV.  Cases  Involving  a  General  Resemblance  and  also  a  Like- 
ness in  the  Names  Used  in  Which  Relief  was  Denied. 

Proctor  &  Gamble  Co.  v.  Globe  Refining  Co.,  92  Fed.  357-1899  (C,  C.  A.  6th 
Cir.).  Complainant  manufactured  soap  which  it  sold  in  packages  having  a 
yellow  wrapper,  on  one  side  of  which  was  printed  in  black  letters  the  words 
"Every  Day  Soap,"  together  with  the  name  and  location  of  the  maker.  There 
was  also  a  small  circular  figure  containing  a  representation  of  a  moon  and  stars 
on  a  black  ground.  Defendant  put  up  its  soap  in  packages  of  similar  size  and 
shape,  having  a  yellow  wrapper,  on  one  face  of  which  was  a  black  ground  con- 
taining only  the  words  "Everybody's  Soap"  in  letters  formed  by  the  yellow 
paper  of  the  wrapper  showing  through  the  black  field  of  the  label.  The  print 
and  figures  displayed  on  the  sides  and  back  of  the  wrapper  bore  no  resemblance 


270  ,  Dress  of  Merchandise 

to  anything  on  complainant's,  and  the  name  and  location  of  the  maker  were 
conspicuously  shown  on  one  side  of  the  package.  This  statement  of  the  case 
is  taken  from  the  headnote.  Held,  that  an  order  refusing  complainant  a  pre- 
liminary injunction  would  not  be  disturbed.  Postum  Cereal  Co.,  Ltd.,  v.  Ameri- 
can Health  Food  Co.,  119  Fed.  848-1902;  56  C.  C.  A.  360  (C.  C.  A.  7th  Cir.). 
Complainant's  cereal  product  was  put  up  in  a  package  with  a  yellow  label  con- 
taining general  printed  matter,  the  conspicuous  words  being  "Grape-nuts," 
the  trade-mark  or  trade  name  printed  on  a  horizontal  black  or  dark-blue  band, 
in  yellow  letters.  Defendant's  cereal  was  put  up  in  a  package  of  the  same  size 
and  shape,  with  a  label  of  the  same  size  of  a  slightly  lighter  shade  of  yellow. 
There  was  a  good  deal  of  difference  in  the  printed  matter,  and  the  prominent 
words  were  "Grain-Hearts,"  printed  in  white  letters  on  a  blue  band  running 
obhquely  across  a  large  red  heart,  a  feature  which  corresponded  to  nothing  in 
complainant's  label.  The  size  of  the  package  and  the  color  of  the  label  were  both 
in  common  use  for  cereals  or  breakfast  foods.  There  was  no  proof  of  actual 
deception.  Held,  no  infringement  of  trade-mark  nor  unfair  competition. 
Gessler  v.  Grieb,  80  Wis.  21-1891;  48  N.  W.  1098.  Plaintiff  sold  medicine  in 
boxes  labeled  "Gessler's  Magic  Headache  Wafers,"  with  directions  for  use,  etc., 
and  the  manufacturer's  name  and  address.  Defendant  sold  medicine  in  sim- 
ilar boxes,  wrapped,  however,  in  paper  of  a  different  color,  and  labeled  "Brown's 
Alpha  Headache  Wafers,"  with  similar  directions,  and  a  different  name  and 
address  as  those  of  the  manufacturer.  Held,  no  infringement,  and  no  grounds 
for  injunction.  Solis  Cigar  Co.  v.  Pozo,  16  Colo.  388-1891 ;  26  Pac.  556.  Parties 
were  both  makers  of  cigars  at  Denver.  Their  labels  contained  several  words 
and  designs  often  used  on  such  labels,  such  as  the  picture  of  a  tobacco  plant, 
and  the  words  "Fabrica  Tobacos"  and  "Habana."  The  name  or  brand  on 
complainant's  label  was  "El  Cabio,"  while  the  name  on  defendant's  label 
(adopted  subsequently  to  complainant's)  was  "El  Cavio."  The  type  on  the 
two  labels,  however,  and  the  details  in  the  pictures  were  quite  dissimilar,  and 
the  name  of  the  manufacturer  was  printed  conspicuously  after  the  name  of  the 
brand,  "De  R.  SoUs"  on  one  label,  and  "De  Pozo  and  Suarez"  on  the  other. 
No  actual  deception  of  purchasers  was  shown.  Held,  no  infringement.  In 
Packham  &  Co.,  Ltd.,  v.  Sturgess  &  Co.,  15  R.  P.  C.  669-1898,  the  get-up  of  the 
goods  was  held  not  to  be  sufficiently  close  to  make  deception  probable  (in  spite 
of  the  identity  of  name,  the  goods  of  each  party  being  called  "Sparkling  Lime 
Wine"). 


V,  Cases  Involving  no  Similarity  in  Names,  hut  a  Resemblance 
in  General  Appearance  Amounting  to  Unfair  Competition.  — 
Cases  of  this  sort  have  long  been  held  to  be  unfair.  As  early  as 
1849  it  was  held,  that  sale  of  "Ohio  Lininient"  in  bottles  and 
with  labels  very  similar  to  those  used  to  market  "Chinese  Lini- 
ment" was  not  proper.^^ 

The  presence  of  a  name  on  a  label,  even  when  showing  dis- 
66  Coffeen  v.  BruiUon,  4  McLean,  516-1849;  Fed.  Cas.  2946. 


Labels  271 

tinctly,  will  not  excuse  or  justify  a  similarity  of  get-up  in  other 
respects.  This  fact  sometimes  increases  the  liability  to  injury, 
for  people  familiar  in  a  general  way  with  the  plaintiff's  device  as 
marking  its  particular  brand,  and  subsequently  seeing  a  similar 
label  on  similar  goods,  but  bearing  defendant's  name,  might 
readily  forget  the  plaintiff's  name,  and  infer  that  defendant  was 
the  manufacturer  of  the  goods  associated  in  their  minds  with  that 
kind  of  a  seal,  and  so  be  led  to  order  from  him  under  the  impres- 
sion that  he  manufactured  the  brand  which  was  in  fact  made  by 
the  plaintiff." 

N.  K.  Fairbank  Co.  v.  R.  W.  Bell  Mfg.  Co.,  77  Fed.  869-1896.  Complainant 
manufactured  soap  powder  of  a  yellow  color  and  devised  a  distinctive  yellow 
package,  bearing  the  words  "Gold  Dust"  and  "Washing  Powder,"  together 
with  the  makers'  name  and  numerous  indicia  and  directions  upon  the  various 
panels.  After  complainant  had  advertised  and  sold  the  powder  for  two  or  three 
years,  defendant  company  began  manufactm-ing  a  yellow  wasliing  powder, 
which  it  styled  "Buffalo  Powder,"  put  up  in  packages  of  the  same  size  as  com- 
plainant's, using  a  yellow  wrapper,  but  making  numerous  changes  in  its  indicia, 
all  of  which  constituted  an  approach  to  those  used  by  complainant.  Held,  that 
notwithstanding  that  the  word  "Buffalo,"  together  with  the  defendant's  name 
on  the  package,  was  distinctive,  there  was  a  simulation  of  complainant's  pack- 
age which  entitled  complainant  to  an  injunction  restraining  the  sale  of  that 
particular  form  of  package,  "or  any  other  form  which  should,  by  reason  of  the 
collocation  of  size,  shape,  coloring,  lettering,  spacing  and  ornamentation,  present 
a  general  appearance  as  closely  resembling  complainant's  packages  as  the  one 
complained  of;  but  that  a  clause  should  be  added  to  the  effect  that  the  injunction 
should  not  be  construed  as  preventing  the  sale  of  packages  of  the  size,  weight, 
shape,  or  color  of  complainant's  packages  provided  that  they  were  so  differ- 
entiated in  general  appearance  as  not  to  be  calculated  to  deceive  the  ordinary 
purchaser"  (from  headnote).  Even  though  the  court  is  satisfied  that  a  new 
form  of  package  was  devised  by  defendant,  with  an  intent  to  stimulate  com- 
plainant's package,  the  continued  use  of  such  package  will  not  be  enjoined 
unless  the  similarity  is  of  a  character  to  convey  a  false  impression  to  the  public 
mind,  and  to  mislead  and  deceive  an  ordinary  purchaser  exercising  ordinary 
care,  but  in  applying  the  test  of  likelihood  of  deception  of  an  ordinary  pur- 
chaser exercising  ordinary  care  regard  must  be  had  to  the  class  of  persons  who 
purchase  the  particular  article  for  consumption,  and  to  the  circumstances  or- 
dinarily attending  their  purchase.  Defendant's  packages  of  soap  powder 
were  of  the  same  size  and  form  as  plaintiff's,  and  wrapped  in  paper  of  the  same 
color,  the  labels  also  were  similar  in  their  combination  of  colors  and  arrange- 
ment and  appearance  of  printed  matter.  Actual  deception  was  shown.  Held, 
unfair  competition.  Hildreth  v.  McDonald  Co.,  164  Mass.  16-1895;  41  N.  E. 
56.  Plaintiff  made  molasses  candy  in  pieces  of  a  certain  size  and  wrapped  them 
"  Moxletj  V.  Braun,  93  111.  App.  189-1900. 


272  Dress  of  Merchandise 

in  papers  with  twisted  ends  and  printed  the  word  "Velvet"  in  red  script  upon 
the  middle  and  ends  of  the  wrappers.  Others  had  used  the  same  method  of 
wrapping  candy,  but  had  not  used  the  word  "Velvet."  The  defendant  used  the 
same  combination  of  size  and  shape  of  candy  and  the  same  kind  and  size  of  paper 
and  manner  of  wrapping,  all  of  which  it  was  held  it  had  a  right  to  do.  But  it 
also  printed  the  word  "McDonald"  upon  its  wrappers,  but  in  Roman  letters 
instead  of  script  and  upon  the  middle  of  the  wrappers  only  (not  on  the  ends). 
The  court  enjoined  the  printing  of  the  red  letters  upon  its  wrappers  by  defend- 
ants, considering  that  this,  in  connection  with  the  other  resemblances,  tended 
to  deceive  the  public.  McCann  v.  Anthony,  21  Mo.  App.  83-1886.  The 
plaintilT  for  a  long  time  had  made  "Old  Coon  Smoking  Tobacco,"  and  for 
years  the  defendant  had  made  "Old  Bachelor  Smoking  Tobacco."  In  1883 
the  plaintiff  began  to  put  up  "Old  Coon"  in  cloth  bags,  having  formerly  used 
paper  bags.  In  the  fall  of  the  same  year  defendant  began  putting  up  "Old 
Bachelor"  in  cloth  bags  of  the  same  size,  and  at  the  same  time  changed  his  label, 
which  before  had  not  been  at  all  like  the  labels  of  the  plaintiff,  to  a  label  similar 
to  plaintiff's  in  form,  size  and  color.  On  the  plaintiff  protesting  against  this 
defendant  added  to  his  label  the  words  "Not  Old  Coon."  Two  witnesses 
testified  that  they  had  been  deceived  by  defendant's  label.  The  court  here 
says:  "The  governing  principle  is  that  one  manufacturer  shall  not  be  allowed 
to  impose  his  goods  upon  the  public  as  the  goods  of  another  manufacturer  and 
so  derive  a  profit  from  the  reputation  of  the  other.  It  is  not  necessary  that  the 
trade-mark,  trade  name,  sign,  label,  or  other  device  which  is  employed  by  one 
merchant  for  that  purpose  shall  be  an  exact  imitation  or  counterfeit  of  the 
trade-mark,  trade  name,  sign,  label,  or  other  device  employed  by  the  other  man- 
ufacturer. Nor  is  it  required  that  the  imitation  be  so  close  as  to  deceive  cau- 
tious and  prudent  persons;  it  is  sufficient  that  it  be  so  close  as  to  deceive  the 
incautious  and  unwary,  and  thereby  work  substantial  injury  to  the  other  manu- 
facturer" (id.  p.  89).  Held,  that  the  use  of  the  words  "Not  Old  Coon"  did  not 
sufficiently  differentiate,  in  view  of  the  close  similarity  in  general  appearance. 
County  Chemical  Co.  v.  Frankenburg,  21  R.  P.  C.  722-1904.  Plaintiff,  in  Jan- 
uary, 1902,  began  to  sell  in  a  green  oblong  box  repair  kits  for  pneumatic  tires. 
The  boxes  bore  a  label  covering  nearly  whole  of  top  of  lid,  had  background  of 
gold  with  slight  green  dots,  and  words  "Chemico  Repair  Outfit,  complete  with 
the  best  materials  for  the  repairs  of  Pneumatic  Tyres."  In  October,  1902,  defend- 
ant got  from  the  maker  of  plaintiff's  labels  samples  of  boxes  for  repair  outfits, 
among  which  was  plaintiff's,  and  then  ordered  a  large  quantity  to  be  "Exactly 
like  plaintiff's  in  color  and  style  of  printing,"  and  used  "Triumph"  instead  of 
"Chemico"  as  a  name,  and  instead  of  words  "The  County  Chemical  Company, 
Ltd.,  Excelsior  Works,  Birmingham,"  defendant  ordered  that  his  box  should 
bear  words  "manufactured  in  Birmingham."  The  output  was  inferior  to 
plaintiff's.  In  July,  1903,  plaintiff  discovered  the  operations  of  defendant  and 
began  suit  in  January,  1904.  Held,  that  plaintiff  was  entitled  to  an  injunction, 
but  not  to  an  order  for  the  destruction  of  defendant's  boxes  and  their  delivery 
to  him,  in  view  of  his  laches  in  delaying  six  months.  "From  July  to  December 
they  slept  on  their  rights." 


Labels  273 

VI.  Cases  not  Involving  a  Name,  in  Which  the  General  Likeness  in 
Get-up  is  not  Close  Enough  to  he   Unfair. 

Philadelphia  Novelty  Mfg.  Co.  v.  Rouss,  40  Fed.  585-1889  (C.  C.  S.  D.  N.  Y.). 
The  resemblance  between  defendant's  package  and  complainant's  consisted  in 
similarity  of  color  of  boxes  and  wrappers,  and  in  the  labels  being  white  with  a 
woman's  head  in  the  center.  There  were  marked  differences  in  the  size  or 
weight  of  the  packages,  the  words  on  the  labels  and  otherwise.  Held,  no  de- 
ceptive simulation.  Continental  Tobacco  Co.  v.  Larus  &  Brothers  Co.,  133 
Fed.  727-1904  (C.  C.  A.  4th  Cir.).  Defendant's  plug  tobacco  was  put  up  in  a 
way  somewhat  similar  to  complainant's,  including  the  use  of  a  tag  of  similar 
size  and  color,  though  the  printed  matter  on  the  tag  was  entirely  different. 
The  method  of  putting  up  the  tobacco,  however,  was  largely  the  same  as  that 
followed  by  the  trade  in  general,  and  not  peculiar  to  the  parties.  Held,  that 
no  unfair  competition  was  shown.  Heinz  v.  Lutz  Bros.,  146  Pa.  St.  592-1891; 
23  Atl.  314.  Suit  to  enjoin  defendant  from  using  on  fruit  preserves  and  similar 
goods  a  label  alleged  to  resemble  plaintiff's  sufficiently  to  mislead  the  public. 
The  words  on  the  labels  were  wholly  different,  but  there  was  some  similarity 
in  the  colors  and  arrangement  of  the  fruits  depicted.  Held,  that  defendant's 
label  was  not  likely  to  deceive  a  purchaser  of  ordinary  intelUgence.  Injunction 
denied.  In  such  a  case  the  possibihty  of  deception  is  not  enough;  it  must  appear 
probable  that  persons  of  ordinary  intelUgence  using  ordinary  care  would  be 
deceived,  and  the  fact  that  after  the  lapse  of  considerable  time  no  one  appears 
actually  to  have  been  deceived  is  strong  evidence  that  there  is  no  probability 
of  deception.  Radam  v.  Capital  Microbe  Destroyer  Co.,  81  Tex.  122-1891;  16 
S.  W.  990.  The  use  by  defendant,  in  selling  a  patent  medicine,  of  jugs  similar 
in  size  and  color,  with  some  similarity,  but  other  marked  points  of  difference  in 
the  labels,  held,  not  to  amount  to  unfair  competition.  The  resemblance  must 
be  sufficient  to  deceive  a  purchaser  of  ordinary  care.  King  &  Co.,  Ltd.,  v.  Gil- 
lard  &  Co.,  Ltd.,  22  R.  P.  C.  327-1905;  affirming  21  R.  P.  C.  589.  Plaintiff 
had  long  made  and  sold  certain  preparations  of  dried  materials  for  soups.  De- 
fendant began  to  make  and  sell  similar  preparations,  put  up  in  packets  and 
boxes  of  similar  forms  and  sizes,  and  with  labels  somewhat  resembUng  plaintiff's 
in  design  and  appearance,  but  in  different  colors  and  with  the  defendant's  name 
"Gillard's"  in  place  of  "Edwards',"  the  name  used  by  the  plaintiff.  Held, 
that  the  resemblance  was  not  sufficiently  close  to  amount  to  fraudulent  or  de- 
ceptive simulation.  Schweppes,  Ltd.,  v.  Gibbens,  22  R.  P.  C.  601-1905.  Plain- 
tiff sold  soda  water  in  bottles  with  a  neck  label  of  chocolate  color  and  wliite 
border,  with  a  red  medallion  in  the  center.  The  label  bore  the  maker's  name. 
Defendant  afterward  began  to  sell  soda  water  in  bottles  bearing  a  label  of  simi- 
lar color  and  border,  and  with  a  red  medallion  in  the  center,  the  words,  how- 
ever, being  different,  giving  defendant's  name  conspicuously,  and  the  red  me- 
dallion bearing  her  trade-mark,  the  figure  of  a  man,  instead  of  the  fountain 
trade-mark  printed  on  the  medallion  of  plaintiff's  label.  Defendant  only  used 
one  label  on  her  bottles,  while  plaintiff  used  two,  and  there  was  some  differ- 
ence in  size  and  shape  of  bottles.  Held,  that  defendant's  labels  were  not 
calculated  to  mislead, 


274  Dress  of  Merchandise 

Under  the  general  head  of  imitation  of  dress,  or  general  ap- 
pearance, should  also  be  placed  a  few  cases  involving  miscel- 
laneous features  imitated  that  are  somewhat  sui  generis,  in- 
volving imitation  in  such  particulars  as  the  card  for  hooks  and 
eyes,  the  flag  of  an  auctioneer,  the  title  of  a  popular  song,  the 
capsule  of  a  bottle,  etc.  For  instance  in  DeLong  Hook  cfc  Eye 
Co.  V.  Excelsior  Hook  &  Eye  &  Fastener  Co.,^  the  cards  to  which 
defendant's  hooks  and  eyes  were  attached  closely  resembled 
comi^lainant's  in  size,  color,  spacing,  manner  of  printing,  and 
mode  of  attaching  the  eyes  to  the  cards,  but  differed  in  the 
printed  words.  Held,  a  simulation  amounting  to  unfair  com- 
petition.    See  also  this  case  on  appeal.^^ 

«« 139  Fed.  146   (1905)  Cir.  Ct.  W.         "^  144  Fed.  682. 
D.  N.  Y. 


CHAPTER  X 

Simulation  of  Articles  Themselves 

Section  134.  Copying  of  features  essential  to  construction. 

135.  Copying  distinguishing  features  as  a  whole. 

136.  Copying  the  whole  article — Making  a  facsimile,  > 

137.  Copying  a  single  feature  or  part. 

138.  Making  repair  parts  for  articles  manufactured  by  others. 

139.  Copying  articles  on  which  patents  have  expired. 

140.  Copying  the  color  of  goods. 

It  is  hard  to  lay  down  a  general  rule  as  to  when  mere  imita- 
tion of  the  form,  color  or  external  details  of  an  article  of  trade 
constitutes  unfair  competition.  It  is,  of  course,  true  that  simu- 
lation in  other  respects,  as  in  labels,  wrappers  or  name,  is  often 
accompanied  by  imitation  of  the  general  appearance  of  the 
goods  themselves.  This  fact  will  always  be  taken  into  account, 
in  connection  with  the  other  points  of  resemblance.  Such  cases 
are  treated  in  the  chapter  entitled  ''Dress  of  Merchandise." 

We  will  now  consider  those  cases  in  which  imitation  of  the 
goods  themselves,  either  as  a  whole,  or  in  some  prominent  fea- 
ture, is  the  sole  or  at  least  a  salient  and  essential  element  of  the 
case.  In  the  absence  of  patent  protection,  there  can  be  no  mo- 
nopoly in  form,  color,  construction  and  general  design  of  an 
aflicle.  But  this  rule  is  to  be  applied  subject  to  certain  qualifica- 
tions which  are  illustrated  by  the  cases  referred  to  below.  Pe- 
culiar and  arbitrary  features  in  the  form,  structure,  arrangement 
of  parts,  oi'otherwise  in  the  general  appearance  of  the  article  it- 
self, are  often  devised  in  large  part  for  the  purpose  of  distinguish- 
ing the  product.  Often  they  are  not  necessary  to  the  usefulness 
oif  the  article  but,  nevertheless,  are  identified  with  it  in  the  public 
mind.  In  such  cases,  imitation  of  the  form  and  general  appear- 
ance of  the  article  itself,  including  these  features  of  it,  may  amount 
to  unfair  competition. 

There  are  cases  which  hold  that  imitation  of  form  and  appear- 
ance of  the  goods  themselves  does  not  amount  to  unfair  competi- 
tion. Where  a  manufacturer  of  sectional  book-cases  not  only 
followed  complainant's  system,  which  was  not  protected  by  valid 

275 


276  Simulation  of  Articles  Themselves 

patent,  but  used  the  same  sizes,  styles  and  varieties  of  wood  and 
the  same  finish,  it  was  held  not  to  constitute  unfair  competition.* 
This,  however,  is  not  the  usual  rule.  Copying  the  different  dis- 
tinguishing features  of  an  object  ordinarily  will  be  condemned. 

The  true  rule  has  been  laid  down  by  Knowlton,  C.  J.,  of  Mas- 
sachusetts,- in  holding  that  dealers  must  recognize  that  when  a 
competitor  honestly  adopts  a  distinctive  get-up  for  his  commodity, 
with  the  evident  purpose  of  distinguishing  his  goods  from  those 
of  others,  it  is  their  duty  to  observe  that  fact,  ''not  indeed  to  the 
abandonment  of  their  right  to  do  what  was  reasonably  necessary 
to  success  in  the  management  of  their  own  business;  but  to  the 
extent  of  so  conducting  their  business  as  not  to  unreasonably 
and  unnecessarily  interfere  with  the  plaintiff's  business  through 
deception  of  the  public." 

§  134.  Copying  of  Features  Essential  to  Construction. — 
The  foregoing  cases  turn  in  part  on  the  rule  that  while  a  manu- 
facturer may  adopt  distinguishing  marks  to  denote  the  origin 
of  his  goods,  or  adopt  some  other  way  of  distinguishing  them, 
the  very  fact  that  his  purpose  is  to  individualize  —  distinguish 
his  goods  from  all  others  —  forbids  the  use  of  characteristics  which 
are  common  to  goods  of  this  character  to  accomplish  this  end. 
No  one  may  be  forbidden  to  copy  or  make  use  of  features  which  are 
necessary  to  the  usefulness  of  all  articles  of  the  same  general  sort. 

In  Marvel  Co.  v.  Fuller  Co.,^  the  boxes  and  labels  were  suffi- 
ciently differentiated,  but  it  was  claimed  that  there  was  a  mis- 
leading similarity  in  the  goods  themselves  (spray  syringes). 
Held,  that  unfair  competition  was  not  shown  since  (as  Wheeler, 
D.  J.,  said):  "There  is  nothing  about  the  article  as  made  and 
sold  by  the  defendants  that  is  not  necessary  in  the  making  and 
operation  of  such  an  instrument.  It  is  made  in  the  form  that 
it  must  be  made  in  order  to  accomplish  its  purpose,  and,  if  the 
making  in  that  form  is  any  representation  that  the  thing  made 
came  from  the  plaintiff,  it  is  because  of  the  extent  to  which  the 
plaintiff  had  made  and  displayed  and  sold  it  before  the  defend- 
ant began."    See  §  50. 

1  Globe-Wernicke  Co.  v.  Fred  Macey  ^  George  G.  Fox  Co.  v.  Glynn,  191 

Co.,  119  Fed.  696-1902  (C.  C.  A.  6th  Mass.  344;  78  N.  E.  89-1908. 

Cir.).     But  see  contra  Globc-Wernicke  =•  125      Fed.      129-1903      (C  .    C. 

Co.  V.  Brow7i,  121  Fed.  90-1902  (C.  C.  N.  Y.). 
A.  7th  Cir.). 


Copying  Distinguishing  Features  277 

§  135.  Copying  Distinguishing  Features  as  a  Whole. — Where 

one  person  had  long  sold  mills  oi  a  particular  design  and  appear- 
ance for  grinding  coffee  and  drugs,  and  a  competitor  put  on  the 
market  mills  resembling  them  so  closely  in  size,  shape  and  de- 
tails of  structure,  in  coloring  and  ornamentation  as  to  be  prac- 
tically indistinguishable,  except  for  the  names  of  the  makers  to 
be  found  on  each,  it  was  held  by  Lacombe,  J.,  that  "a.  court  of 
equity  will  not  allow  a  man  to  palm  off  his  goods  as  those  of  an- 
other whether  his  misrepresentations  are  made  by  word  of  mouth, 
or,  more  subtly,  by  simulating  the  collocation  of  details  of  appear- 
ance by  which  the  consuming  public  has  come  to  recognize  the 
product  of  his  competitor."^ 

In  Glohe-Wernicke  Co.  v.  Brown  &  Besly,^  the  defendant  in 
1897  changed  entirely  the  style  and  appearance  of  the  box-files 
for  letters  and  papers  which  it  had  been  selling,  and  closely  imi- 
tated in  many  details  of  construction,  form,  color,  markings,  etc., 
including  certain  words  and  emblems,  the  box-files  long  sold  by 
complainant  as  ''Leader"  and  ''Eureka"  files.  It  was  unlawful 
for  defendant  thus  to  copy  the  ensemble  of  these  files,  with  the 
purpose  and  effect  of  misleading  the  public,  although  each  fea- 
ture of  the  files,  separately,  was  open  to  public  use. 

Again  a  defendant  reproduced  the  phonograph  disks  of  the 
plaintiff  by  making  a  matrix  from  disks  made  by  the  latter  which 
were  on  the  market.  Plaintiff's  disks  were  black  and  red,  with  a 
picture  of  a  dog  in  the  center,  while  defendants  made  their  disks 
dark  brown  with  an  eagle  and  their  name  on  them;  both  had  red 
seal  centers.  The  court  held  that  the  law  of  unfair  competition 
could  be  invoked  and  a  preliminary  injunction  was  issued  "against 
the  manufacture  and  sale  of  disk  records,  black  or  nearly  black 
in  color,  with  a  red  seal  center  inscribed  with  decoration  and 
letters  in  gilt,  when  such  records  contain  the  shop  numbers  or 
catalogue  numbers  of  complainant's  disk  records,  or  when  the 
sound-recording  grooves  thereon  are  copies  of  the  grooves  on 
complainant's  disk  records."  ^ 

*  Enterprise  Mfg.   Co.   v.   Landers,  ^  121  Fed.  90-1902  (C.  C.  A.  7th 

Frary  &   Clark,   131   Fed.   240-1904  Cir.).     See  Mueller  Mfg.  Co.  v.  Mc- 

(C.  C.  A.  2d  Cir.).    See  also  St.  Paul  Donald  Co.,  164  Fed.  1000-1909. 

Electric  Co.  v.  McCrum-Howell,    189  ^  Victor    Talking    Machine    Co.    v. 

Fed.  849-1911  (C.  C.  A.  8th  Cir.)  and  Armstrong,     132    Fed.     711-12-1904 

Pope  V.  id.,  191  Fed.  979-1911  (C.  C.  (C.  C.  S.  D.  N.  Y.). 
A.  7th  Cir.). 


278  Simulation  of  Articles  Themselves 

In  Wilcox  &  Gibbs  Sewing  Machine  Co.  v.  The  Gibbens  Frame,^ 
after  the  expiration  of  the  patent  on  a  machine,  the  frame  of 
which  was  made  in  a  pecuHar  form  or  shape  (the  letter  G),  com- 
plainant claimed  to  be  still  entitled  to  a  trade-mark  right  in  the 
use  of  this  shape.  The  shape  of  the  frame  was  not  arbitrary,  but 
had  practical  advantages.  Held,  that  complainant  had  no  ex- 
clusive right  to  use  it. 

It  well  may  be  that  the  court  lacks  power  to  enjoin  the  de- 
fendant from  using  any  single  one  of  the  various  details  that  go 
to  make  up  the  distinguishing  features  of  an  article.  It  has 
power,  however,  to  forbid  the  use  of  a  number  of  these  features 
together  where  the  result  is  confusion.^ 

The  fact  that  necessity  demands  the  use  of  the  various  fea- 
tures common  to  both  plaintiff's  and  defendant's  goods  will  not 
necessarily  relieve  defendant  from  unmistakably  indicating  upon 
his  goods  and  in  his  advertising  the  maker  of  the  goods. ^"^ 

§  136.  Copying  the  Whole  Article — Making  a  Facsimile. — 
The  foregoing  cases  show  the  application  of  the  rule  against 
copying  the  general  features  by  which  the  public  has  come  to 
know  an  article,  even  though  the  simulated  features,  if  Tised 
alone,  be  such  as  may  be  properly  adopted  by  anyone.  Usually 
these  cases  involve  other  features  unfair  in  character,  such  as 
simulating  the  design  of  the  labels,  the  similarity  of  the  names, 
the  use  of  the  same  colors,  or  the  copying  of  the  form  and  shape 
of  containers.  There  are,  however,  some  cases  where  nothing 
is  involved  except  the  copying  of  the  commodity  itself.^  A  good 
example  is  E.  P.  Button  &  Co.  v.  Cupples,^^  where  the  plaintiff 

'  17  Fed.   623-1883   (C.   C.  S.   D.  of  the  separate  features  of  plaintiff's 

N.  Y.).  lock  were  open  to  public  use,  and  al- 

^  Coca  Cola  Co.  v.  Gay-Ola  Co.,  200  though    the    differences    in    the    two 

Fed.  720-1912  (C.  C.  A.  6th  Cir.).  locks  were  such  as  dealers  generally 

^  McDonald  &  Morrison  Mfg.  Co.  would  notice,  this  was  held  to  be  un- 

V.  Mueller  Mfg.  Co.,  183  Fed.  972-1910  fair  competition.    It  is  remarked  in  the 

(C.  C.  A.  8th  Cir.).  opinion  that  where  two  articles  are 

3  Yale  &  Towne  Mfg.  Co.  v.  Alder,  submitted  the  court  can  judge  cor- 
154  Fed.  37-1907  (C.  C.  A.  2d  Cir.,  rectly  as  to  resemblances  and  tendency 
reversing  149  Fed.  783-1906).  Plain-  to  deceive  and  the  testimony  of  ex- 
tiff  manufactured  a  padlock,  which  perts  or  of  dealers  is  of  little  assistance 
defendant   closely   imitated   in   form,  (p.  38). 

size,  coloring,  lettering  and  details  of          i»117  App.  Div.  (N.  Y.)  1st  dep't, 

finish,  then  sold  liis  product  at  a  price  172-1907;    102    N.    Y.    Supp.    309; 

lower  than  plaintiff's.    Although  most  Shepp  v.  Jones,  35  Weekly  Notes  of 


Copying  the  Whole  Article  279 

had  for  several  years  published  a  uniform  series  of  illustrated 
books,  with  covers  of  a  peculiar  style,  each  one  generally  con- 
taining a  single  favorite  poem,  and  these  books  became  well 
known  and  had  a  wide  sale.  They  were  not  copyrighted.  De- 
fendants then,  by  some  photographic  or  mechanical  process, 
copied  the  books  with  their  illustrations,  and  closely  imitated 
the  covers.  The  work  was  of  inferior  quality,  and  the  books 
were  sold  for  prices  much  lower  than  plaintiff's.  Held  to  be 
unfair  competition.  In  an  English  case,"  plaintiff  made  cigars 
with  bull-nosed  or  flattened  shape.  These  were  the  only  cigars 
of  this  style  sold.  Defendant  copied  the  shape  used  by  plaintiff, 
but  contended  that  other  cigars  of  the  same  shape  were  sold.  He 
failed  to  prove  his  case.  The  court  said,  "that  although  defend- 
ant is  selling  in  boxes  which  are  not  capable  of  being  mistaken,  he 
is  inclosing  in  the  box  a  cigar  which  is  capable  of  being  mistaken 
and  which  will  be,  on  the  evidence,  likely  to  be  mistaken  when  it 
is  taken  out  of  the  box.  He  might  distinguish  his  goods  by  put- 
ting bands  on  cigars  themselves."     Injunction  granted. 

In  1890,  the  United  States  Circuit  Court  in  Pennsylvania  de- 
cided that,  regardless  of  the  question  of  trade-mark,  a  manufac- 
turer who  bronzed  the  heads  of  his  nails  to  distinguish  them  from 
others,  was  entitled  to  restrain  others  from  bronzing  theirs  in  the 
same  manner.  "Whether  this  is  in  itself  a  good  trade-mark  or 
not,  it  is  a  style  of  goods  adopted  by  the  complainants  which  the 
defendants  have  imitated  for  the  purpose  of  deceiving,  and  have 
deceived  the  public  thereby,  and  induced  them  to  buy  their 
goods  as  the  goods  of  the  complainants.  This  is  fraud."  ^^  This 
passage  is  quoted  with  favor  in  Lawrence  Mfg.  Co.  v.  Tennessee 
Mfg.  Co.'' 

In  contrast  to  this  case,  and  as  showing  the  different  views 
which  have  been  taken  of  this  question,  it  is  interesting  to  note 
that,  within  a  year  of  the  decision  in  the  last-mentioned  case  by 
the  federal  court  in  Pennsylvania,  the  state  court  there  took  the 
opposite  view,  in  Putnam  Nail  Co.  v.  Dulaney.^'^    In  this  case, 

Cases    (Pa.),   29-1892,   is    a    similar  !=•  138  U.   S.  537-1891;  34  L.  ed. 

case,  as  to  a  book  of  photographs.  997;  11  Sup.  Ct.  396. 

^^  Elliott  &  Co.  V.  Hodgson,  19  R.  "140   Pa.    St.    205-1891;    21    Atl. 

P.  C.  518-1902.  391;  11  L.  R.  A.  524. 

12  Putnam  Nail  Co.  v.  Bennett,  43 
Fed.  800-1890. 


280  Simulation  of  Articles  Themselves 

plaintiff,  a  manufacturer  of  horse-shoe  nails,  had  adopted  the 
method  of  bronzing  its  nails  in  order  to  distinguish  them  as  being 
of  its  manufacture.  No  other  manufacturer  had  made  bronzed 
nails,  and  the  bronzing  had  no  effect  on  the  quality  or  usefulness 
of  the  nails.  Plaintiff  sought  to  enjoin  defendant  from  selling  a 
precisely  similar  nail,  alleging  that  defendant  bronzed  his  nails 
in  order  to  pass  them  off  on  the  public  as  the  plaintiff's.  The 
imitation  of  plaintiff's  goods  by  defendant  appears  to  have  been 
limited  to  this  one  particular,  and  it  was  decided  that  the  bronz- 
ing could  not  constitute  a  trade-mark,  and  that,  as  the  plaintiff's 
process  was  not  patented,  defendant  was  entitled  to  sell  nails 
bronzed  like  those  of  plaintiff. 

Where  the  plaintiff  manufactured  zithers,  and  the  defendant 
made  similar  instruments  so  closely  resembling  plaintiff's  in  out- 
line, arrangements  of  strings  and  other  peculiarities,  that  it  was 
manifest,  on  inspection,  that  there  had  been  a  deliberate  copying 
of  it  in  all  essential  and  many  nonessential  details,  the  Massa- 
chusetts court  has  held  that,  while  defendant  had  a  right  so  to 
imitate  plaintiff's  instrument,  he  should  be  required,  before  offer- 
ing his  goods  for  sale,  to  mark  them  clearly  so  as  to  indicate  un- 
mistakably that  they  are  the  defendant's  and  not  the  plaintiff's 
goods.  ^^  This  decision  rests  on  a  somewhat  different  ground 
from  Putnam  v.  Bennett. ^^'^  The  one  holds  it  fraud  to  copy 
a  ''style  of  goods"  with  fraudulent  intent.  The  other  that  to 
copy  is  quite  allowable,  but  that  it  is  fraud  not  to  mark  the 
goods  so  distinctly  as  to  avoid  confusion.  In  the  zither  case 
Holmes,  J.,  says  at  p.  90,  ''Both  zithers  are  adapted  for  the  use 
of  patented  sheets  of  music,  but  the  zithers  are  not  patented. 
Under  such  circumstances  the  defendant  has  the  same  right  that 
the  plaintiff  has  to  manufacture  instruments  in  the  present  form, 
to  imitate  the  arrangement  of  the  plaintiff's  strings  or  the  shape 
of  the  body.  In  the  absence  of  a  patent,  the  freedom  of  the 
manufacturer  cannot  be  cut  down  under  the  name  of  preventing 
unfair  competition.  All  that  can  be  asked  for  is  that  precau- 
tions be  taken,  so  far  as  are  consistent  with  the  defendant's 
fundamental  right  to  make  and  sell  what  he  chooses,  to  prevent 
the  deception  which  no  doubt  he  desires  to  practice.  It  is  true 
that  a  defendant's  freedom  of  action  with  regard  to  some  sub- 

^"•Flagg  Mfg.   Co.  v.   Holway,   178  '^"  Putnam  Nail  Co.  \.  Bennelt,  43" 

Mass.  83-1901;  59  N.  E.  GG7.  Fed.  800-1890. 


Copying  the  Whole  Article  281 

sidiary  matter  of  ornament  or  label  may  be  restrained,  although 
a  right  of  the  same  nature  with  its  freedom  to  determine  the 
shape  of  the  articles  which  it  sells.  But  the  label  or  ornament 
is  a  relatively  small  and  incidental  affair,  which  would  not  exist 
at  all,  or  at  least  would  not  exist  in  that  shape  but  for  the  intent 
to  deceive;  whereas  the  instrument  sold  is  made  as  it  is  partly, 
at  least,  because  of  a  supposed  or  established  desire  of  the  public 
for  instruments  in  that  form.  The  defendant  has  the  right  to  get 
the  benefit  of  that  desire,  even  if  created  by  the  plaintiff.  The 
only  thing  he  has  not  the  right  to  steal  is  the  good-will  attaching 
to  the  plaintiff's  personality,  —  the  benefit  of  the  public's  desire 
to  have  goods  made  by  the  plaintiff." 

The  point  of  difference  between  the  two  cases  just  referred  to 
is  made  by  Judge  Holmes  to  rest  on  the  fact  that  the  public 
has  a  desire  for  zithers  in  a  particular  form.  Anyone  may  make 
and  sell  goods  in  that  form  if  it  is  not  covered  by  patents.  The 
law  of  unfair  competition  cannot  give  to  one  dealer  the  sole  right 
to  use  that  form,  even  though  he  may  have  been  the  first  one  to 
make  zithers  in  that  manner.  This  would  be  an  instance  of  sec- 
ondary meaning  which  attaches  to  a  process  or  form  of  manufac- 
ture and  not  to  a  person.  The  result  of  the  difference  has  been 
noticed  in  the  chapter  on  "Geographical  Names,"  in  referring  to 
names  indicating  process.  It  is  this:  No  one  can  obtain  the  sole 
right  to  a  name  or  article  which  has  become  attached  to  a  process ; 
but  one  may  acquire  valuable  and  distinct  rights  to  a  name  or  form 
of  goods  which  has  become  associated  with  his  personality.  The 
first  maker  of  zithers  in  this  particularly  desirable  style  may  have 
created  a  desire  on  the  part  of  the  public  for  one  of  two  things, 
either  for  zithers  made- by  hi??i,  above  all  other  zither  makers,  or 
for  zithers  made  in  a  particular  form  regardless  of  who  makes 
them.  The  law  of  unfair  competition  is  interested  in  the  first  of 
these  conditions  —  the  one  attaching  to  the  personality.  But 
the  fact  that  the  demand  for  zithers  has  been  created  by  the 
plaintiff  will  not  put  the  case  within  the  unfair  competition  rules, 
where  the  demand  is  for  the  article,  not  the  personality.  ^''^ 

Fox,^^  the  complainant,  was  the  first  to  manufacture  a  par- 

"''  Above  passage   cited  and   ap-  Mass.  99-1905,  85  N.  E.  417.    See 

proved,  Diamond  Co.  Y.  C7.  <S.  Co.,  N.  Y.  also  George  G.  Fox  Co.  v.  Glynn,  191 

L.  J.  Ap.  23, 1917,  by  N.  Y.  App.  Div.  Mass.    344-1906;    78   N.    E.    89;  9 

16  Geo.  E.  Fox  Co.  v.  Hathawaij,  199  L.  R.  A.  N.  S.  1096n. 


282  Simulation  of  Articles  Themselves 

ticular  kind  of  bread,  using  in  it  milk  and  malt,  and  applied  to  it 
as  a  trade  name  the  word  ''Creamalt."  The  bread  was  made 
in  an  oval  loaf,  unusual  in  shape  and  size,  and  having  a  peculiar 
broken  and  glazed  surface,  so  as  to  produce  an  odd  visual  appear- 
ance. This  combination  of  external  characteristics  was  neither 
economical  nor  necessary,  and  nothing  similar  was  in  use  by 
others.  Defendants  then  began  to  make  similar  bread,  calling 
it  "Crown  Malt,"  and  imitating,  first,  the  form  of  the  loaf,  and 
then  also,  with  a  slight  difference,  the  peculiar  appearance  of  the 
surface,  and  a  label  resembling  that  used  by  complainant  was 
attached  to  the  loaf.  A  band  was  put  around  the  loaf  by  both 
plaintiff  and  defendant,  the  former  calling  his  product  "Fox's 
Creamalt,"  the  latter  naming  his  "Hathaway's  Log  Cabin  Bread." 
This  band  was  easily  removable  by  retail  dealers.  Knowlton, 
C.  J.,  says:  "The  plaintiff  had  no  exclusive  right  in  any  one  of 
the  features  of  the  combination,  and  if  the  defendants  had  re- 
quired the  use  of  this  combination  for  the  successful  prosecution 
of  their  business,  they  would  have  had  a  right  to  use  it,  by  taking 
such  precautions  as  would  prevent  deception  of  the  public  and 
interference  with  the  plaintiff's  good  will.  But  the  evidence 
shows  that  the  defendants  had  no  occasion  to  use  this  combina- 
tion, and  therefore  they  were  not  justified  in  producing  an  imita- 
tion of  the  plaintiff's  loaves,  the  natural  effect  of  which  would 
be  to  deprive  it  of  a  part  of  its  trade  through  deception  of  the 
public.  There  are  numberless  shapes  and  sizes  in  which  loaves 
of  bread  may  be  produced,  and  various  peculiarities  of  appear- 
ance in  color  and  condition  of  surface.  These  that  the  defend- 
ants adopted  had  been  combined  to  distinguish  the  plaintiff's 
Creamalt  bread,  and  it  was  the  duty  of  other  manufacturers  to 
recognize  this  fact.  Not,  indeed,  to  the  abandonment  of  their 
right  to  do  what  was  reasonably  necessary  to  success  in  the 
management  of  their  own  business;  but  to  the  extent  of  so  conduct- 
ing their  business  as  not  unreasonably  and  unnecessarily  to  inter- 
fere with  the  plaintiff's  business  through  deception  of  the  public." 
In  George  Fox  Co.  v.  Best  Baking  Co.,^^"  the  Massachusetts  court 
went  further  still  and  held  that  even  if  the  form  used  by  defend- 
ant had  definite  practical  advantages,  instead  of  being  arbitrary 
and  uneconomical,  still  the  defendant  could  be  enjoined  unless 
it  found  some  adequate  means  of  distinguishing  its  goods. 

'«"  209  Mass.  251. 


Copying  the  Whole  Article  283 

The  Second  Circuit  Court  of  Appeals  has  said  in  Rushmore  v. 
Badger  Brass  Co.,  ^^^  ''When  it  appears  that  a  competitor  has  un- 
necessarily and  knowingly  imitated  his  rival's  goods  in  nonfunc- 
tional features,  a  court  of  equity  is  justified  in  interfering." 

In  the  case  of  Rushmore  v.  Manhattan  Screw  and  Stamping 
Works, ^'^  the  Circuit  Court  of  Appeals,  Second  Circuit,  carried 
the  doctrine  even  further  perhaps  than  does  the  Massachusetts 
case.  In  that  case,  the  complainant  in  the  use  of  the  words 
''Flare  Front,"  applied  to  an  automobile  lamp,  obtained  an  in- 
junction against  the  imitation  of  the  form  and  appearance  of  the 
shell  inclosing  the  lamp,  although  it  conspicuously  bore  the  dis- 
tinctive name  of  defendant.    The  court  said : 

"We  are  thus  confronted  with  the  naked  question  of  law  — 
can  one  who  manufactures  and  sells  a  well-known  article  of 
commerce,  like  an  automobile  searchlight  inclosed  in  a  shell  of 
graceful  but  unpatented  design,  maintain  a  bill  for  an  injunction, 
profits,  and  damages  against  a  defendant  who  sells  automobile 
search  lights  inclosed  in  a  similar  shell,  with  his  name  prominently 
appearing  thereon  as  the  maker,  and  who  has  never  represented 
that  his  lamps  were  made  by  the  complainant?  We  feel  con- 
strained to  answer  this  question  in  the  affirmative  upon  the  au- 
thority of  Enterprise  Co.  v.  Landers,^''"  and  Yale  &  Towne 
Mfg.  Co.  V.  Alder. ^^  Both  of  these  cases  were  decided  by  this 
court  and  we  see  no  way  to  distinguish  them  on  principle  from 
the  case  at  bar.  We  are  of  the  opinion,  however,  that  to  answer 
this  question  in  favor  of  the  complainant  carries  the  doctrine  of 
unfair  competition  to  its  utmost  limit.  If  it  be  pushed  much 
further,  those  engaged  in  trade  will  be  encouraged  to  run  to  the 
courts  with  trivial  complaints  over  the  petty  details  of  business 
and  thus  will  grow  up  a  judicial  paternalism  which  in  time  may 
become  intolerable." 

In  the  case  of  John  A.  Banzhaf  v.  Edward  C.  Chase,^^  the  plain- 
tiffs made  "Old  Homestead  Bread."  Defendant  put  on  the 
market  "New  Homestead"  bread,  the  words  being  stamped  and 
arranged  on  the  loaf  in  the  same  manner  as  that  used  by  the 

'6^  198  Fed.  379-1912.  See  also  Nathan  Mfg.  Co.  v.  H.  A. 

"  163  Fed.  939-1908  (C.  C.  A.  2d  Rogers  Co.,  N.  Y.  Law  Jour.,  Feb.  27, 

Cir.).  1909. 

""  131  Fed.  240-1904.  "  150  Cal.  180-1907. 
»U54  Fed.  37;  83  C.  C.  A.   149. 


284  Simulation  of  Akticles  Themselves 

plaintiff.  The  bread  of  the  defendant  was  of  a  character  to  be 
mistaken  for  that  of  the  plaintiff.  Injunction  was  granted  on 
ground  of  fraud.  The  plaintiff's  case  was  held  to  rest  "on  the 
right  of  the  plaintiffs  to  restrain  the  conduct  of  the  defendant 
whereby  he,  in  order  to  injure  the  plaintiffs  and  benefit  himself, 
simulates  the  plaintiffs'  goods,  deceives  the  plaintiffs'  patrons 
into  the  belief  that  his  bread  is  that  made  by  the  plaintiffs.  *  *  * 
The  right  of  action  *  *  *  arises  from  the  fraudulent  pur- 
pose and  conduct  of  the  defendant  and  the  injury  caused  to  the 
plaintiffs  thereby,  and  it  exists  independently  of  the  law  regulat- 
ing trade-marks.  *  *  *  The  gist  of  such  an  action  is  not 
the  appropriation  and  use  of  another's  trade-mark,  but  the 
fraudulent  injury  to,  and  appropriation  of,  another's  trade." 

Shaw  V.  Pilling  ^^  was  an  action  of  trespass  for  infringement. 
Plaintiff,  with  the  aid  of  a  physician,  invented,  but  did  not  patent, 
an  atomizer,  which  he  called  the  "Burgess  Atomizer,"  naming 
it  from  his  partner.  Defendants  (and  other  parties  as  well) 
afterward  began  to  make  an  exactly  similar  atomizer,  indorsing 
it  in  a  similar  box,  with  a  label  containing  the  same  cut  or  picture, 
and  called  it  the  "Burgess  Atomizer." 

Defendants  claimed  that  the  name  Burgess  had  come  to  be 
merely  descriptive,  not  denoting  a  particular  manufacturer,  but 
were  held  liable  for  damages. 

These  cases  indicate  the  general  rule,  viz.,  that  it  is  unfair  to 
copy  another's  goods  if  by  so  doing  one's  own  goods  may  be  passed 
off  as  those  of  that  other.  The  right  of  everyone  to  make  copies 
of  unpatented  articles  does  not  permit  the  use  of  this  right  in 
such  a  way  as  to  create  fraud. 

§  137.  Copying  a  Single  Feature  or  Part.  —  The  rules  apply- 
ing to  imitation  of  a  complete  article  apply  equally  to  copying 
a  single  salient  feature  or  part.  Where  a  complainant  had  long 
manufactured  stoves  and  ranges  with  white  enamel  lining  on 
the  inside  of  the  doors,  which  feature  distinguished  these  stoves 
to  the  eye  from  all  others,  and  they  were  often  called  "White 
Enamel"  stoves,  it  was  held  that  defendant  had  no  right  to  use 
similar  white  lining  for  the  inside  of  the  doors  of  his  stoves,  with 
intent  to  lead  the  public  to  suppose  his  goods  to  be  those  of 
complainant.^^ 

'»  175  Pa.  St.  78-1896.  Kiechle,  76  Fed.  758-1896  (Ci-.  Ct. 

"  Buck's   Stove  and   Range   Co.   v.      Ind.). 


Making  Repair  Parts  for  Articles  285 

In  Geo.  Frost  Co.  v.  E.  B.  Estes  &  Sons,"^"^  complainant  made  a 
hose  supporter,  the  distinctive  feature  of  which  was  a  rubber 
button  with  a  metal  rivet,  used  to  attach  the  hose  to  the  sup- 
porter. The  use  of  a  rubber  button  for  this  purpose  was  pro- 
tected by  a  patent.  Defendant  manufactured  a  wooden  button, 
intended  to  be  used  with  a  metal  rivet,  colored  like  rubber,  and 
resembling  complainant's  button  in  appearance.  Hose  support- 
ers with  wooden  buttons  had  often  been  sold  for  those  with  rubber 
buttons,  and  sometimes  specifically  for  complainant's  supporters ; 
but  defendant  himself  did  not  make  or  sell  supporters.  Held, 
that  defendant  made  the  buttons  for  the  purpose  of  aiding  unfair 
trade,  and  should  be  enjoined  from  thus  contributing  to  the  wrong 
done  the  complainant. 

§  138.  Making  Repair  Parts  for  Articles  Manufactured  by 
Others.  —  These  cases  are  important,  for  much  injury  is  often 
done  to  manufacturers  by  other  dealers  putting  on  the  market 
parts  of  articles  made  by  these  manufacturers  for  purposes  of 
repair.  These  parts  must  of  necessity  be  exact  copies  in  form 
and  shape  of  the  original  parts;  and  the  question  in  these  cases 
is,  what  constitutes  a  representation  that  these  repair  parts  are 
made  by  the  original  manufacturer? 

The  Enterprise  Manufacturing  Co.  had  for  many  years  made 
and  sold  meat  choppers  and  also  separate  repair  parts  to  replace 
parts  of  the  machine  that  were  damaged  or  worn  out.  Many  of 
these  parts  were  marked  with  the  company's  name.  The  patents 
on  them  had  expired.  Bender  made  repair  parts  for  the  machine 
of  the  same  shape  and  appearance  as  complainant's,  and  these, 
although  put  up  in  distinctive  packages,  usually  reached  the 
consumer  without  markings  indicating  origin.  No  actual  de- 
ception was  proved  and  the  court  held  that  he  should  not  be  re- 
quired to  mark  the  parts  with  his  name.^^ 

Where  an  employee  of  a  manufacturer  of  electric  batteries  and 
renewal  plates  learned  the  business  and  then  started  out  on  his 
own  account  and  manufactured  plates  similar  in  shape,  size,  and 
appearance  to  complainant's,  and  intended  to  be  used  as  renewal 
plates  for  complainant's  batteries,  he  was  restrained  from  selling 
such  plates  without  conspicuously  stamping  them  with  his  name, 

22 156  Fed.  677-1907  (C.  C.  Mass.).  156  Fed.  641-1907  (C.  C.  A.  6th 
Affirmed  176  Fed.  338-1910.  Cir.). 

23  Bender   v.   Enterprise   Mfg.    Co., 


286  Simulation  of  Articles  Themselves 

or  otherwise  clearly  distinguishing  them  to  the  eye  from  com- 
pkiinunt's  goods.-' 

It  IS  not  unfair  to  use  the  name  of  a  well-known  article  in 
labeling  a  repair  part,  if  it  be  used  in  a  bona  fide  way  and  simply  to 
indicate  that  the  part  is  made  to  fit  that  article.'^ 

Magce  Furnace  Co.  v.  Le  Barron  ^^  holds  that  it  is  lawful  to  make 
and  sell  these  repair  parts  if  not  patented  and  that  the  numerals 
and  letters  used  by  the  maker  of  the  article  itself  to  designate 
these  parts  may  be  freely  used  by  him  who  makes  only  the  parts, 
as  they  are  not  a  part  of  the  mark  on  the  article  itself  and  are  not 
likely  to  mislead  when  considered  alone.  The  Circuit  Court  of 
Appeals  considers  this  case  of  little  authority,  for  it  says  of  it: 
"The  opinion  *  *  *  was  aimed  at  a  mere  question  of  fact,  that 
is,  whether  the  letters  or  numbers  used  on  certain  parts  of  stoves 
were  any  part  of  the  trade-mark  in  question."  2'' 

In  Avery  v.  Meikle  &  Co.,-^  the  defendants  purchased  plows 
made  by  the  plaintiffs,  dismantled  them,  and  then  copied  the 
parts  exactly,  and,  using  plaintiffs'  plows  as  patterns,  began  to 
make  plows  so  similar  to  plaintiffs'  that  no  ordinary  person  could 
tell  them  apart.  ''They  also  imitated  almost  to  perfection  the 
interchangeable  metal  points  of  appellants'  plows  "  (p.  82) .  They 
copied  all  the  following  marks  used  by  plaintiffs  on  their  plows, 
"A.  0.,"  ''B.  0.,"  "C.  O.,"  "Vz,"  ''!,"  "2,"  "3,"  "8,"  used  the 
mark  "P.  0."  in  place  of  ''Pony,"  and,  like  plaintiffs,  placed  on 
their  plows  the  words  "Louisville,"  and  "Keep  all  taps  screwed 
up."  The  letters  used  were  the  same  size  and  kind,  and  in  the 
same  position  on  the  plows.  The  varnishing  of  the  plows  was 
the  same.  The  only  difference  between  the  goods  of  plaintiffs 
and  those  of  the  defendants  was  in  the  actual  trade-marks  used, 
—  each  party  putting  on  its  goods  its  own  name  and  mark.  Soon 
after  the  defendants  put  on  the  market  the  plows  copied  from  the 
plaintiffs'  designs,  their  sales  increased  from  30  to  100  plows  per 
day.  They  sold  largely  to  jobbers,  and  put  on  their  plows  so 
sold,  not  their  own  name  and  mark,  but  the  name  and  mark  of 
the  jobber  to  whom  the  goods  were  sold.     Held,  that  the  defend- 

"  Edison    Mfg.    Co.    v.    Gladstone,  "  /^g  Page  v.   Riissia  Cement  Co., 

58  All.  391-1903.  51  Fed.  941-1892  (C.  C.  A.  1st  Cir.); 

^^  Wagner  Typewriter  Co.  v.  F.  S.      17  L.  R.  A.  354  et  seq. 
Webster  Co.,   144  Fed.  405-1906  (C.  "» 81  Ky.  73-1883.      See  also  Rath- 

C.  S.  D.  N.  Y.).  •  borne,  Sard  &  Co.  v.  Champion  Co., 

2«  127  Mass.  115-1879.  189  Fed.  26. 


Making  Repair  Parts  for  Articles  287 

ants  had  a  right  to  copy  the  plaintiffs'  plows,  the  court  saying: 
"The  shape  and  construction  of  the  plows  do  not  form  any  part 
of  the  trade-mark  of  appellants."  It  cited  Candee,  Swan  &  Co. 
V.  Deere  &  Co.,"^^  where  the  Illinois  court  said:  ''Anyone,  there- 
fore, has  a  perfect  right  to  make  plows  in  their  exact  simihtude, 
even  to  the  '  curve  of  the  mould-board '  and  '  the  tip  of  the  handles ' 
—  in  the  minutest,  as  well  as  in  the  most  important  parts  —  all 
have  a  right  to  manufacture  them  no  matter  where  the  maker 
may  reside,  and  has  the  right  to  put  the  name  of  the  place  where 
manufactured  as  well  as  his  own  name  on  such  parts  of  the  plows  as 
he  pleases,  taking  care,  however,  so  to  use  the  brand  as  not  to  de- 
ceive the  public,  so  as  not  to  create  a  belief  that  the  plow  is  the 
manufacture  of  another;"  and  citing  also  Fairbanks  v.  Jacobus.^^ 
"The  only  thing  he  (defendant)  has  not  the  right  to  steal  is  the 
good-will  attached  to  the  plaintiff's  personality  —  the  benefit 
of  the  public's  desire  to  have  goods  made  by  the  plaintiff. "^^ 

The  opinion  in  the  Avery  case  continues: 

"If  so  restricted,  the  case  is  plain,  for  what  they  used  they  had 
the  right  to  use,  but  the  manner  in  which  they  used  these  letters 
and  figures  constitutes  the  wrong.  They  have  used  lawful  things 
in  an  illegal  way.  Instead  of  using  them  to  designate  quality 
and  size  merely,  which  is  allowable,  they  did  not  content  them- 
selves, but,  under  the  pretense  of  designating  quality  and  size, 
which  the  letters  and  figures  really  do,  they  pressed  them  into 
another  service,  by  placing  them  at  points  and  in  positions  on 
their  plows  that  corresponded  with  the  manner  of  their  use  by 
appellants.  For  this  reason  the  appellants'  trade-mark  could 
not  perform  its  legitimate  functions;  its  povvcr  of  designating 
their  make  of  plows  was  lessened,  and  to  that  extent  their  trade 
coming  to  them  from  their  reputation,  as  evidenced  by  their 
trade-mark,  was  destroyed,  and  the  way  opened  for  appellees  to 
claim  that  loss  as  their  gain,  thus  usurping  the  trade  reputation  of 
\  appellants  by  the  artful  manner  of  using  and  combining  artificial 
\^__signs  common  to  all  as  signifying  quality  and  number  generally." 

The  right  to  copy  parts  of  machines  is  considered  in  Deering 
Harvester  Co.  v.  Whitman  &  Barnes  Co.^-    Also  the  right  to  use 

29  54111.439-461-1870.  on  this  point  Cooke  &   Cobb  Co.  v. 

30 14  Blatchf.  337.  Miller,   169  N.   Y.  475-1902;  62  N. 

3'  Flagg  v.  Ilolway,  178  Mass.  83-  E.  582. 
91-1901;  59  N.  E.  667.     See  further  '^  91  Fed,  376-1898, 


288  Simulation  of  Articles  Themselves 

letters  and  figures  used  by  the  plaintiff  on  such  parts;  and  it  was 
held  that  there  were  no  trade-mark  rights  in  these  marks,  that 
any  office  of  designating  source  which  these  marks  perform  is 
accidental,  that  it  is  open  to  all  persons  to  make  these  parts  of 
the  plaintiff's  machine. 

In  this  connection  the  case  of  Richards  v.  Williamson  ^^  is  inter- 
esting. This  case  deals  with  the  sale  of  repair  parts  of  a  gun  as  unfair 
trade  (p.  749) .  In  Reading  Stove  Works  v.  Howe,^^"  it  was  considered 
lawful  for  defendant  to  sell  parts  of  plaintiff's  stoves  provided  the 
plaintiff's  trade-mark  or  trade  name  was  not  placed  thereon. 

§  139.  Copying  Articles  on  Which  Patents  Have  Expired. — 
Owners  of  a  patented  article  have  an  absolute  monopoly  of  the 
right  to  make  and  sell  that  article  during  the  life  of  the  patent, 
and  in  this  period  no  one  may  copy  it.  The  absolute  property 
of  the  patentee  in  it  gives  him  the  right  to  demand  its  protection. 
But  when  the  patent  expires,  a  competitor  may  copy  the  article 
in  every  detail  without  interference  as  to  the  mere  copying.  Here 
the  law  of  unfair  competition  steps  in,  and  forbids  the  marketing 
of  the  goods  made  by  others  than  the  patentee,  in  any  manner 
which  will  pass  off  their  article  as  that  of  those  who  made  it  under 
the  patent.  The  pubhc  learned  to  know  the  ''Singer"  sewing- 
machine  from  the  machine  made  by  the  patentees.  The  latter 
were  entitled,  on  the  expiration  of  the  patent,  to  all  of  the 
good-will  which  had  been  created  through  the  merits  of  that 
machine  as  made  by  them,  despite  the  fact  that  the  design  was 
now  public  property.  In  other  words,  there  is  now  a  differ- 
ence between  a  Singer  machine,  viz.,  one  made  according  to 
Singer's  patents,  and  a  machine  made  by  the  company  which 
made  the  machines  under  the  patents. ^^'' 

The  fact  that  the  frame  of  a  peculiar  shape  was  an  important 
feature  of  a  patented  sewing-machine  did  not,  upon  the  expira- 
tion of  the  patent,  give  to  the  patentees  any  exclusive  right  to 
use  a  frame  of  that  shape,  on  the  ground  that  the  manufacturer's 
goods  had  come  to  be  known  and  identified  by  the  public  by  that 
peculiarly  shaped  frame  provided  the  frame  of  that  shape 
served  a  useful  purpose. ^^ 

"  30  L.  T.  Rep.  746-1874.  "  Wilcox  &  Gibbs  Sewing  Machine 

'•>"  201  Mass.  437.  Co.   v.   The  Gibbens  Frame,   17  Fed. 

33*  Singer  Mfg.  Co  v.  June  Mfg.  Co.,  623-1883  (C.  C.  S.  D.  N.  Y.). 
163  U.  S.  169. 


Copying  Articles  When  Patents  Have  Expired     289 

While  upon  the  expiration  of  a  patent,  the  name  by  which 
the  article  has  come  to  be  known  is  open  to  general  use,  this 
cannot  be  claimed  as  to  the  form  of  dress,  such  as  a  wrapper  of 
pecuhar  design  by  which  the  article  has  been  known  to  the  pub- 
lic.^'^  These  features  have  nothing  to  do  with  the  patent  rights, 
and  are  property  of  the  patentee.  As  to  them  the  general  rules 
as  to  dress  apply,  for  which  see  Chapter  on  ''Dress."  He  who 
makes  use  of  the  design  of  an  expired  patent  must  lunit  himself  to 
that  design  or  device;  he  must  not  adopt  its  other  features  and  so 
cause  confusion. 

In  Scriven  v.  North,^'^  Jeremiah  A.  Scriven  began,  in  1884, 
the  manufacture  of  a  new  style  of  men's  drawers,  the  body  por- 
tion of  which  was  of  white  jeans,  with  longitudinal  insertions  of 
elastic  knitted  fabric  inside  and  outside  of  the  legs,  and  at  the 
back.  Until  that  time  drawers  were  all  made  of  a  uniform  color, 
and  in  order  to  make  his  garments  distinctive,  Scriven  had  the 
body  portion  of  his  garments  made  white  and  the  elastic  insertions 
yellow  or  buff.  The  selection  of  this  buff  color  was  deliberate, 
and  for  the  purpose  of  making  it  conspicuous  and  different  from 
other  similar  garments.  He  gave  these  drawers  the  name  of 
''Elastic  Seam,"  and  the  distinguishing  number  "50,"  both 
the  words  and  the  number  being  stamped  upon  the  drawers. 
His  goods  were  made  under  patents,  and  known  as  the  "Scriven 
Drawers."  At  the  expiration  of  the  patent,  the  defendants  and 
others  began  to  market  goods  of  a  similar  type,  but  inferior  in 
quality  and  cheaper,  making  no  attempt  to  conceal  the  fact  that 
they  deliberately  made  their  goods  very  similar  to  those  the 
plaintiffs  had  made  under  their  patent.  The  plaintiffs  had 
marked  their  goods  for  some  time  with  an  oval  stamp  made  up 
of  the  words,  "Scriven's  Elastic  Seam"  in  a  semicircle  with 
three  straight  printed  lines  below  and  the  number  "50."  The 
defendants  put  upon  their  goods  an  oval  stamp  reading  as  fol- 
lows: "Standard  Stretchy  Seam,"  with  three  lines  printed  be- 
low, and  the  number  "50."  The  stamps  closely  resembled  each 
other.  When  plaintiffs'  goods  were  first  put  on  the  market, 
these  words  were  stamped  in  straight  lines,  the  defendants  also 

«  Centaur   Co.    v.  Killenberger,    87  fying  124  Fed.  894-1903  (C.  C.  Md.). 

Fed.  725.  See  also  Rice-Stiz  v.  Scrivin,  165  Fed. 

3"  134  Fed.  366-1904  (C.  C.  A.  4th  639-1909. 
Cir.);  67  C.  C.  A.  348;  s.  c.  modi- 


290  Simulation  of  Articles  Themselves 

stamping  theirs  in  straight  hnes,  and  when  the  plaintiffs  adopted 
the  oval  stamp,  the  defendants  did  likewise.  The  plaintiffs' 
goods  had  two  distinctions:  (1)  The  buff-colored  insertion  in  the 
legs,  which  made  them  unique,  for  before  they  began  manufac- 
turing them,  nothing  of  the  kind  was  known.  (2)  The  name 
''Elastic  Seam,"  a  fanciful  designation  identified  with  the  plain- 
tiffs' goods.  The  defendants  first  adopted  a  straight  stamp,  and 
afterward,  when  complainants  began  to  use  an  oval  stamp,  fol- 
lowed them  by  adopting  a  stamp  of  like  shape,  with  lettering 
and  lines  so  arranged  as  would  be  likely  to  mislead  the  careless 
observer.  The  words  "Stretchy  Seam"  are  intended  to  convey 
to  the  mind  of  the  purchaser  precisely  the  same  idea  as  is  con- 
veyed by  the  words  ''Elastic  Seam,"  words  not  subject  to  an 
exclusive  appropriation.  The  opinion  of  the  court  was  that  the 
defendants  adopted  and  applied  the  name  "Stretchy  Seam" 
to  their  garments  for  the  purpose  of  imitating  the  name  which 
had  been  adopted  by  the  plaintiffs. 

In  Centaur  Co.  v.  Link,^'^  after  the  expiration  of  the  patent  on 
"Castoria,"  and  the  word  became  public  property,  the  owners 
spent  more  than  $100,000  a  year  in  advertising  the  name.  The 
defendant  put  out  a  remedy  called  "Castoria"  in  a  bottle  and 
wrapper  sunilar  to  that  of  the  plaintiffs.  The  court  considered 
that  purchasers,  not  aware  of  the  fact  that  other  manufacturers 
were  making  "Castoria,"  were  being  deceived;  that  persons  using 
such  articles  are  not  familiar  with  printed  matter  upon  them 
but  recognize  them  by  the  size,  general  appearance,  and  possibly 
the  most  strikingly  displayed  words  on  the  wrapper;  that  it  was 
the  duty  of  the  defendant  to  make  clear  to  the  purchaser  that  its 
remedy  was  not  that  manufactured  by  the  complainant  under  the 
name  "Castoria." 

"The  presence  of  an  inequitable  purpose  is  necessarily  an  ele- 
ment of  great  weight  in  the  determination  of  a  question  of  fair- 
ness in  trade.  And  where  another  avails  himself  of  the  principle 
of  public  dedication,  he  must  in  good  faith  fully  identify  his 
production,  and  clearly  disassociate  his  work  from  the  work  of 
the  one  who  has  given  significance  to  the  name,  and  sufficiently 
direct  the  mind  of  the  trading  pubhc  to  the  fact  that,  though  the 
thing  is  of  the  same  name,  that  it  is  something  produced  and 
put  upon  the  market  by  himself."  ^^ 

"  62  N.  J.  Eq.  147-1901;  49  Atl.  828.         's  g.  &  C.  Merriam  Co.  v.  Ogilvie, 


Copying  Articles  When  Patents  Have  Expired    291 


Purchase  of  a  patented  article  from  the  inventor  or  his  gran- 
tees, carries  with  it  the  right  to  lawfully  use  the  inventor's  name 
to  describe  it.  To  allow  a  restraining  of  such  a  use  might  lead  to 
an  indefinite  extension  of  the  benefits  of  patent  statutes.  ^^ 


159  Fed.  638-1908  (C.  C.  A.  1st  Cir.) 
[modifying  149  Fed.  858].  After  the 
copyriglit  on  earlier  editions  of  Web- 
ster's Dictionary,  published  by  the 
Merriam  Co.,  had  ex^jired,  defendant 
published  an  edition  under  the  name 
of  "Webster's  Imperial  (a  universal) 
Dictionary;"  the  Merriam  Co.'s  later 
edition  being  entitled  "Webster's  In- 
ternational Dictionary."  Defendant 
placed  his  own  name  as  publisher  on 
the  title  page  and  the  back,  but  used  at 
the  same  time  such  titles  and  phrases  as 
"The  latest  complete  authentic  Web- 
ster's Dictionary,"  with  a  reference 
to  supplementary  matter  contributed 
by  Noah  Porter  to  later  Merriam 
editions.  Tlie  court  below  condemned 
certain  misleading  circulars  issued 
by  defendant,  but  permitted  the  use 
of  the  words  used  on  title  page  and 
back,  on  the  ground  that  the  addition 
of  defendant's  name  as  pubhsher 
sufficiently  notified  the  pubhc  that 
the  book  was  not  that  pubhshed  by 
the  Merriams;  the  court  at  the  same 
time  enjoined  the  Merriams  from  rep- 
resenting that  they  were  exclusively 
entitled  to  the  name  "Webster's  Dic- 
tionary." On  appeal,  the  injunctive 
relief  already  awarded  was  sustained, 
but  was  extended  so  as  to  condemn  the 
title  pages  and  backs  then  used  by  de- 
fendant, it  being  considered  that  the 
words  used  were  misleading,  in  spite 
of  the  use  of  defendant's  name. 

Merriam  v.  Famous  SJioe  &  Clothing 
Co.,  47  Fed.  411-1891  (C.  C.  E. 
D.  Mo.),  as  to  copying  book  after 
copyright  had  expired;  and  Mer- 
riam   V.    Texas    Siftings    Pub.    Co., 


49    Fed.    944-1892    (C.    G.    S.    D. 

N.  Y.). 

Sternberg  Mfg.  Co.  v.  Miller  &  Co., 
161  Fed.  318-1908  (C.  C.  A.  8th  Cir.) 
reversing  C.  C.  Complainant  pat- 
ented a  cigar  mold,  the  chief  merit  of 
which  was  its  increased  strength  from 
the  grain  of  the  wood  running  up 
and  down,  and  this  became  generally 
known  as  "Vertical  Top."  Held,  that 
upon  the  expiration  of  the  patent  rival 
makers  were  entitled  to  use  this  name, 
indicating  at  the  same  time  the  dif- 
ference of  origin.  Defendant,  how- 
ever, was  found  to  be  using  in  its 
catalogues  and  circulars  a  series  of 
figures  of  tools,  etc.,  deceptively  sim- 
ilar to  those  used  in  complainant's, 
and  was  required  to  indicate  more 
clearly  to  the  public  that  the  goods 
advertised  were  not  of  complainant's 
manufacture.  The  appellate  court 
directed  that  the  defendant  be  en- 
joined "from  manufacturing  and  plac- 
ing upon  the  market  the  'Vertical 
Top'  cigar  mold,  without  plainly 
stamping  thereon,  or  otherwise  plainly 
indicating,  the  name  of  the  defendant 
as  the  manufacturer  thereof,  and  also 
from  copying  or  reproducing,  in  its 
published  catalogues,  circulars,  or 
other  printed  advertising  matter,  the 
cuts  and  figures  of  tools,  implements 
and  macliinery  produced  and  pub- 
fished  by  complainant  connected  with 
its  trade,  without  distinctly  indicating 
therewith,  so  as  to  reasonably  advise 
the  pubfic,  the  fact  that  the  same  are 
of  the  manufacture  and  use  of  the 
defendant." 

33  Edison  v.  Mills-Edisonia  (N.  J. 
Ch.),70Atl.  191-1908. 


292  Simulation  of  Articles  Themselves 

§  140.  Copying  the  Color  of  Goods.  —  Color  as  put  upon 
goods  themselves  may  be  considered  sometimes  as  dress,  some- 
times as  a  part  of  the  article  itself.  Where  two  dealers  put  out 
matches  which  were  colored  in  the  same  way,  the  court  said  if 
two  colors  there  used  could  be  appropriated,  other  colors  also 
could  be  appropriated  for  other  matches,  and  a  monopoly  of 
the  trade  would  result. ^° 

In  a  recent  case  coming  before  the  United  States  Supreme 
Court,  as  a  statutory  trade-mark  case,  the  court  declined  to  ex- 
press any  opinion  as  to  how  it  would  have  dealt  with  the  case  if 
presented  on  the  broad  basis  of  unfair  competition,  but  was  of 
the  opinion  that,  in  the  case  before  it,  there  could  be  no  trade- 
mark in  the  device  of  painting  one  strand  of  wire  rope  a  distinc- 
tive color,  no  particular  color  being  specified,  remarking  that  no 
authority  exists  for  recognizing  mere  color,  not  connected  with  a 
particular  design,  as  a  trade-mark. ^^  In  Scriven  v.  North,*^ 
the  use  of  similar  colors  is  made  a  question  of  good  faith.  Said 
the  court:  "We  do  not  think  that  it  would  be  proper  to  forbid  by 
injunction  the  use  of  a  Hke  color  of  insertion  (of  a  colored  strip  in 
underwear),  if  that  was  the  natural  color  of  the  material  used; 
*  *  *  but  the  use  of  an  inferior  material  dyed  to  imitate  the 
color  adopted  by  the  complainants  ought  clearly  to  be  forbidden, 
for  this  color  was  originally  selected  by  the  complainants  for  the 
purpose  of  distinguishing  their  goods,  and  the  use  of  inferior  ma- 
terial dyed  to  imitate  it,  could  have  no  other  purpose  than  to 
deceive,  and  would  be  calculated  to  mislead,  the  public,  accus- 
tomed to  the  distinctive  characteristics  of  the  complainants' 
garments,  into  buying  an  inferior  article." 

The  Circuit  Court  in  Maryland  has  refused  to  follow  this 
rule,'*^  and  after  a  full  discussion,  held  that  there  was  no  unfair 
competition  in  using  a  buff-colored  longitudinal  strip,  resembling 
complainant's,  it  appearing  that,  although  the  natural  color  of 
the  American  cotton  used  by  defendant  was  not  buff,  like  that 
of  the  Egyptian  cotton  used  by  complainant,  it  was  common  in 

«  Diamond  Match  Co.  v.  Saginaw  «  134  Fed.  366-at  p.  373-1904  (C. 

Match   Co.,    142   Fed.   727-1906    (C.  C.  A.  4th  Cir.). 

C.  A.  6th  Cir.).  " ./.  A.  Scriven  Co.  v.  Morris,  154 

*'Leschen    &    Sons    Rope    Co.    v.  Fed.  914-1907;  affirmed  in  158  Fed. 

Broderick   &   Bascom   Rope   Co.,   201  1020.    See  also  Newcomer  &  Lewis  v. 

U.  S.    166-1906;   30  L.   ed.   710;  26  Scriven  Co.,  168  Fed.  621-1909  (C.  C. 

Sup.  Ct.  425.  A.  6th  Cir.). 


Copying  the  Color  of  Goods  293 

trade  to  bleach  it  white  or  dye  it  buff,  since  the  natural  color  was 
unpleasing  to  the  eyes. 

In  Coca  Cola  Co.  v.  Gay-Ola  CoJ'^  the  defendant  was  forbidden 
to  copy  the  artificial  color  of  plaintiffs'  beverage  when  it  was 
demonstrated  that  other  colors  could  have  been  used  equally 
well.  There  was  strong  evidence  of  fraudulent  intent  on  the  part 
of  defendant,  and  the  color  was  only  one  of  various  means  used 
by  defendant  to  pass  off  his  goods. 

"  200  Fed.  720-1912  (C.  C.  A.  6th  Cir.). 


CHAPTER  XI 

Trade  Secrets 

Section  141.  Property  in  trade  secrets. 

142.  Protection  of  trade  secrets. 

143.  Injunctions  against  breach  of  contract  by  disclosure  of  secrets. 

144.  Is  a  secret  a  monopoly? 

145.  Conditional  sale  of  goods  made  by  secret  formulae. 

146.  Publication  of  a  secret,  what  constitutes. 

147.  Disclosure  of  a  secret  in  court. 

148.  Discovery  of  a  secret  by  lawful  means. 

149.  Violation  of  contract  of  employment  by  betrayal  of  secrets. 

150.  Employees  are  bound  by  implied  contract  not  to  disclose  secrets. 

151.  Title  to  secrets  discovered  by  employee  as  a  part  of  his  work. 

152.  Unlawful  secrets. 

153.  Danger  of  injury  to  plaintiff  by  defendant's  disclosures  must  exist. 

154.  One  who  avails  himself  of  a  secret  fraudulently  disclosed  may 

be  enjoined  and  held  accountable  for  profits. 

155.  Name  of  a  jobber  from  whom  goods  are  bought  may  be  a  trade 

secret. 

156.  Transfer  of  secrets. 

157.  List  of  customers  is  secret  property.    No  one  may  canvass  them 

except  the  owner  of  the  list. 

158.  Pleading,  practice  and  form  of  remedy. 

159.  Defenses. 

160.  Duty  of  corporate  oflBcers  as  to  trade  secrets. 

161.  Letters  may  be  trade  secrets. 

§  141.  Property  in  Trade  Secrets.  —  A  secret  is  ''something 
known  only  to  one  or  a  few  and  kept  from  others;  anything 
hidden  from  general  knowledge  or  observation;  something  not 
to  be  told."  ^  A  secret  may  be  property,  just  as  land  is 
property;  for  money  and  other  value  is  often  given  in  return 
for  learning  it.  It  somewhat  resembles  the  property  one  has 
in  an  unpublished  manuscript.  The  right  to  have  exclusive 
knowledge  of  foreign  financial  news  for  fifteen  minutes  after 
its  receipt  by  the  Associated  Press  has  been  held  property;^ 
so  also  the  knowledge  of  secret  processes  of  manufacture,  and 

>  Standard  Diet.  1610.  Telegraph  Co.,  50  How.  Pr.  (N.  Y.) 

'^  Kienian    v.    Manhattan    Quotation      194-1876. 
294 


Property  in  Trade  Secrets  295 

formulae  for  making  various  articles  and  the  names  of  the  cus- 
tomers of  a  business  house.  In  fact,  any  information  legitimately 
obtained  which  is  in  the  nature  of  a  secret,  a  state  of  knowledge 
which  is  valuable  because  a  few  only  know  the  facts  of  which  it 
consists,  is  property;  and  the  business  conditions  of  to-day  make 
it  imperative  that  he  who  wrongfully  publishes  secret  informa- 
tion should  be  enjoined  and  prevented  from  so  doing. 

Peabody  invented  a  process  of  making  gunny  cloth  from  jute 
butts,  and  machinery  to  make  it,  and  employed  Norfolk  as  ma- 
chinist. Norfolk  became  confidentially  possessed  of  knowledge 
of  the  machinery  and  process  and  entered  into  an  agreement  with 
Peabody  not  to  divulge  the  secrets.  Norfolk  left  Peabody  two 
years  later  and  began  plans  to  build  a  rival  factory  fitted  with 
machinery  on  Peabody's  model.  In  the  opinion  in  this  case 
Judge  Gray  speaks  of  the  character  of  the  rights  of  the  owner  of 
a  secret  thus :  "  If  he  invents  or  discovers  and  keeps  secret  *  *  * 
he  has  not  indeed  an  exclusive  right  to  it  as  against  the  public, 
or  against  those  who  in  good  faith  acquire  knowledge  of  it;  but 
he  has  a  property  in  it  which  a  court  of  chancery  will  protect 
against  one  who,  in  violation  of  contract  and  breach  of  confidence 
undertakes  to  apply  it  to  his  own  use,  or  to  disclose  it  to  third 
persons."  ^ 

A  baker  may  acquire  such  property  in  an  established  route, 
or  list  of  customers  as  will  entitle  him  to  an  injunction  against 
an  employee  to  prevent  his  conspiring  to  leave  said  baker  and 
divert  customers  from  said  route  to  a  rival  baker.  ^ 

"Independent  of  copyright  or  letters  patent,  an  inventor  or 
author  has,  by  the  common  law,  an  exclusive  property  in  his 
invention  or  composition  until,  by  pubhcation,  it  becomes  the 
property  of  the  general  pubhc."  ^  The  power  to  protect  such 
property  is  a  part  of  the  original  jurisdiction  of  chancery,  in- 
dependently of  any  rights  which  the  injured  party  may  have 
at  law.  It  has  power  to  prevent  any  act  which  the  court  con- 
siders to  be  a  wrong,  whether  the  wrong  arises  from  violation 
of  a  right  or  from  a  breach  of  confidence.^ 

3  Peabody  v.  Norfolk,  98  Mass.  452-  authority  Palmer  v.  De  Witt,  47  N.  Y. 

1867.  532-1872;  Woolsey  v.  Judd,  4  Duer 

*  Smith  V.  Kernan   (Ohio),  5  Law  (N.Y.),S79-1855;  Peabody  y.  Norfolk, 

Bui.  145;  8  Ohio  Dec.   Reprint,  32.  98  Mass.  452-1867;  Saloinon  v.  Hertz, 

«  Tabor  v.  Hoffman,  118  N.  Y.  30,  40  N.  J.  Eq.  400-1885;  2  Atl.  379. 

at  p.  34-1889;  23  N.  E.  12,  citing  as  ^Pollard    v.    Photographic    Co.,    40 


296  Trade  Sdcrets 

An  owner  of  a  trade  secret  may  do  with  it  as  he  will.  He  may 
refuse  utterly  to  sell  goods  made  from  it,  if  he  wishes.  He  may 
fix  prices  as  he  chooses.  He  may  sell  at  one  price  to  one  per- 
son, at  another  to  another.  He  is  not  required  to  give  reasons  or 
deal  fairly  with  purchasers,  but  his  control  over  their  goods 
ceases  with  their  sale.^ 

§  142.  Protection  of  Trade  Secrets.  —  There  is  no  statutory 
protection  of  one  who  makes  an  article  by  a  secret  process  or 
private  formula.  He  may  have  a  property  right  in  it,  but  he 
has  no  special  property  right  similar  to  the  right  of  the  owner 
of  a  patent  or  copyright.  His  secret  is  valuable  only  because 
of  its  being  a  secret,  and  only  so  long  as  he  keeps  it  secret. 
The  general  public  is  free  to  find  it  out,  by  any  fair  and  hon- 
est method.^  Nevertheless  the  owner  may  protect  himself 
by  the  help  of  a  court  of  equity,  against  discovery  by  breach  of 
confidential  relations.^ 

In  France  a  penal  statute  exists  which  punishes  an  employee  who 
communicates  a  secret  of  manufacture,  by  fine  and  imprison- 
ment, and  puts  such  a  person  under  surveillance  of  the  police.^'' 
This  statute  covers  all  secrets  of  manufacture.  If  there  be  a 
publication  of  the  secret,  then  the  owner  or  the  discoverer  or 
the  inventor  has  no  further  right  to  claim  the  courts'  protection. 

An  owner  of  a  secret  is  protected  against  a  breach  of  contract 
by  which  his  secret  is  betrayed.  Fowle  v.  Park  ^Ms  a  leading 
case  in  the  United  States  on  this  point,  and  Fuller,  C.  J.,  held 
there,  that  as  the  contracts  involved  were  based  on  a  valuable 
consideration,  and  were  limited  as  to  space  (but  not  as  to  time), 

Ch.  Div.  34.5-1889.     "Independently  man,  118  N.  Y.  30-1889;  23  N.  E. 

of  any  question  as  to  the  right  at  12;  16  Am.  St.  Rep.  740;  Peabody  v. 

law,   the   court   of   chancery  has   al-  Norfolk,  98  Mass.  452-1867;  96  Am. 

ways  had  an  original  and  independ-  Dec.   664;    Vulcan   Detinning   Co.   v. 

ent  jurisdiction  to  prevent  what  that  American    Can    Co.,    67    N.    J.   Eq. 

court    considered    and   treated    as   a  243;    58     Atl.    290-1904;    John    D. 

wrong,  whether  arising  from  a  \iola-  Park  &  Sons  v.  Hartman,  153  Fed. 

tion   of   an   unquestionable   right   or  24-1907;  12  L.  R.  A.  N.  S.  135,  note, 

from   a  breach   of   contract   or  con-  ^  Tavis    v.   Knapp,    121     Fed.   34; 

fidence"  (at  p.  354).  Harrison  v.  Glucose  Co.,  116  Fed.  304; 

'  Dr.   Miles   Medical  Co.   v.   Piatt,  58  L.  R.  A.  915;  Morison  v.  Moat,  9 

142  Fed.  60&-1906,  and  cases  cited.  Hare,  241. 

8  Chadmck    v.    Covell,    151     Mass.  '°  §  418,  Code,  Penal. 

190;  23  N.  E.  1068;  6  L.  R.  A.  839;  «  Foxole  v.  Park,  131  U.  S.  88-1889; 

21  Am.  St.  Rep.  442;  Tabor  v.  Hoff-  33  L.  cd.  67;  9  Sup.  Ct.  658. 


Breach  of  Contract  by  Disclosure  of  Secrets     297 

and  concerned  a  secret  compound,  the  court  would  enforce  them; 
that  vendors  were  entitled  to  sell  to  the  best  advantage,  and  to 
preclude  themselves  from  competition  with  those  to  whom  they 
sold,  and  to  prevent  competition  between  purchasers,  and  that 
the  purchasers  were  entitled  to  reasonable  protection  (id.  p.  97). 
See  §§  174-5  as  to  conditional  sales  of  goods  made  by  secret 
process. 

§  143.  Injunctions  Against  Breach  of  Contract  by  Disclosure 
of  Secrets.  —  The  court  will  restrain  a  third  person  from  induc- 
ing a  person  to  break  his  contract  by  disclosing  information  of 
a  confidential  nature  or  trade  secrets.  The  court  proceeds  on 
the  theory  that  valuable  property  of  the  plaintiff  is  imperilled 
by  the  threatened  disclosure. 

"It  is  competent  for  a  news  agency  to  collect  information 
from  a  public  source  and  transmit  it  to  subscribers  to  whom  it 
is  new,  upon  the  terms  that  they  shall  not  communicate  it  to 
third  parties;  and  the  court  will  interfere  by  injunction  to  restrain 
a  subscriber  from  communicating  such  information  to  a  third 
party  in  breach  of  his  contract,  and  also  to  restrain  a  third  party 
from  inducing  a  subscriber  to  break  his  contract  by  supplying 
him  with  such  information  with  a  view  to  pubhcation."  ^^ 

The  contention  is  made  that  to  uphold  these  contracts  is  to  up- 
hold a  restraint  of  trade.  The  foundation  of  the  rule  as  to  invalid- 
ity of  contracts  in  restraint  of  trade  is  considered  by  Chief  Justice 
Fuller  to  be  the  case  of  Mitchel  v.  Reynolds, ^^  and  his  comment 

12  Exchange  Telegraph  Co.,  Ltd.,  v.  plaintiffs,  to  supply  the  information 
Central  News,  Ltd.,  2  Ch.  48-1897  that  defendants  could  no  longer  obtain 
(headnote);  Exchange  Telegraph  Co.,  from  plaintiffs,  and  then  used  such 
Ltd.,  V.  Gregory  &  Co.,  73  L.  T.  120-  information  for  the  purpose  of  their 
1895;  affirmed  in  1  Q.  B.  147-1896.  business  by  posting  it  on  bulletin 
Plaintiff  published  stock  exchange  boards  in  various  places.  Held,  that 
bulletins,  and  under  an  exclusive  con-  defendants  had  no  right  to  appro- 
tract  with  the  stock  exchange  man-  priate  the  information,  which  was 
agement,  furnished  stock  exchange  plaintiffs'  property,  that  they  were 
quotations  to  subscribers  under  a  mahciously  interfering  with  plaintiffs' 
contract  by  which  the  subscribers  business,  and  that  the  interference  was 
bound  themselves  not  to  communicate  actionable  without  proof  of  special 
information  thus  obtained  to  non-  damage.  Injunction  granted.  (Note 
subscribers.  Defendants  were  for-  copyright  infringement  was  also  in- 
merly  subscribers  but  had  ceased  to  be  volved.) 

such.     They  induced  subscribers,   in  i^  1  P.  Wms.   181;   1  Smith  Lead, 

violation    of    their    contracts    with  Cas.,  Pt.  II,  508. 


298  Trade  Secrets 

on  that  case  is  instructive  as  to  the  interpretation  of  such  cases 
in  the  hght  of  modern  conditions.  He  says,^'^  "but  as  it  (the  rule 
of  that  case)  was  made  under  a  condition  of  things  and  a  state  of 
society  different  from  those  which  now  prevail,  the  rule  laid  down 
is  not  regarded  as  inflexible  and  has  been  considerably  modified. 
Public  welfare  is  first  considered;  and  if  it  be  not  involved,  and 
the  restraint  upon  one  party  is  not  greater  than  protection  to 
the  other  requires,  the  contract  may  be  sustained." 

Thus  it  is  seen  that  Chief  Justice  Fuller  sustains  these  con- 
tracts, not  on  the  theory  that  they  were  outside  the  common- 
law  rule  against  restraint  of  trade,  but  that  they  were  valid  be- 
cause the  court  considered  them  necessary  to  protect  the  rights 
of  the  owner  of  the  secret. 

Justice  Gray  considers  them  lawful,  "because  the  process 
must  be  kept  secret  in  order  to  be  of  any  value,  and  the  public 
has  no  interest  in  the  question  by  whom  it  is  sold."  ^^ 

§  144.  Is  a  Secret  a  Monopoly?  —  So  long  as  the  owner  of 
a  secret  keeps  it  a  secret  he  has  a  monopoly.  While  equity  af- 
fords protection  to  trade  secrets  against  betrayal  by  those  under 
contract  or  in  confidential  relations  with  the  owners  of  the  secret, 
there  is  no  difference  between  contracts  as  to  trade  secrets  and 
contracts  as  to  any  other  personal  property,  so  far  as  restraint 
of  trade  is  concerned.  There  is  such  a  difference  between  con- 
tracts as  to  patents  and  those  as  to  secrets,  because  of  the  statu- 
tory monopoly  of  patentees.  No  such  distinction  is  enjoyed  by 
contracts  involving  trade  secrets.  Contracts  forming  a  part  of 
a  system  used  in  selling  goods,  which  limit  and  restrict  the  rights 
of  jobbers  and  retailers,  by  forbidding  them  to  sell  goods  except 
to  specified  persons  or  classes  of  persons,  are  held  illegal. ^'^  It 
makes  no  difference  as  to  the  validity  of  these  contracts  whether 
the  articles  to  which  they  relate  are  made  by  a  secret  process  or 
not.  There  is  nothing  about  a  secret  process,  which  so  differen- 
tiates it  from  other  personal  property,  as  to  warrant  the  stifling 
of  competition,  which  results  from  these  contracts.  See  full  dis- 
cussion of  question  in  John  D.  Park  &  Son  v.  Hartman}'^    There 

^*F(ywU  V.  Park,  131  U.  S.  88-9-  "See   Dr.  Miles   Medicine  Co.  v. 

1889;  9  Sup.  Ct.  658.  Piatt,  142  Fed.  606-1906. 

i!*  Central  Transportation  Co.  v.  Pull-  "  153  Fed.  24-1907;   12  L.   R.  A. 

man  Palace  Car  Co.,  139  U.  S.  24-53-  N.  S.  135,  note. 
1890;  35  L.  ed.  55;  11  Sup.  Ct.  478. 


Sale  of  Goods  Made  by  Secret  Formulae         299 

it  is  contended  that  any  such  restrictions  on  the  sale  of  goods 
must  be  shown  to  be  not  larger  than  necessary  for  the  protection 
of  the  owner  of  the  secret  process  against  such  unjust  use  of  the 
secret  as  will  injure  the  business  and  rights  in  it,  which  the  owner 
retains.  ''A  partial  restraint  of  competition  may  be  upheld 
when  one  sells  a  business  or  other  property,  provided  it  is  no 
greater  than  necessary  to  enable  the  vendor  to  realize  the  value 
of  his  good-will  or  to  secure  to  the  buyer  the  enjoyment  of  his 
purchase,  or  to  prevent  the  use  of  the  property  to  the  prejudice 
of  the  seller"  (id.  p.  44,  Lurton,  J.).^^ 

§  145.  Conditional  Sale  of  Goods  Made  by  Secret  Formulae. 
—  Under  certain  circumstances  a  seller  may  impose  conditions 
and  limitations  with  respect  to  price  and  reselling,  on  persons 
who  buy  his  goods.  It  has  been  claimed  that  to  do  that  is  to 
offend  the  rules  of  the  common  law  against  restraint  of  trade 
and  monopoly,  and  the  federal  anti-trust  act.  Formerly  such 
conditions  were  imposed  usually  on  goods  made  under  patents, 
copyrights,  secret  processes,  and  patents.  ^^  One  who  violated 
conditions  of  this  sort,  as  to  a  patented  article,  was  an  infringer. 
These  restrictions  were  held  to  be  valid,  because  of  the  monopoly 
of  the  owner  of  the  patent,  which  gave  him  the  right  to  reserve 
to  himself  as  much  or  little  of  his  exclusive  right  as  he  pleased. 

These  conditions  have  been  changed  by  the  decisions  of  the 
Supreme  Court  in  Dr.  Miles  Co.  v.  Platt,^^"  in  Henry  v.  A.  B. 
Dick  Co.,^^''  and  other  similar  cases  in  which  it  was  denied 
that  patents,  trade  secrets  or  copyright  gives  to  the  owner  thereof 
any  right  to  fix  the  price  after  a  sale  of  the  goods  outright  to 
another.  These  cases  do  not  deny  the  right  to  make  a  condi- 
tional sale  that  shall  bind  an  immediate  vendee,  as  to  resale 
price  unless  the  defendant  is  acting  in  such  a  manner  as  to  produce 
a  substantial  restraint  of  trade.  In  the  Miles  case,  the  plaintiff 
had  a  uniform  system  of  contracts  which  was  held  to  constitute 
restraint  of  trade,  and  was  therefore  condemned. 

§  146.  Publication  of  a  Secret,  what  Constitutes.  —  Pub- 
lication   consists   in   imparting    secret    information  in  such  a 

18  For  a  further  discussion  of  the  man,  153  Fed.  24-7-1907  (C.  C.  A.) 

right  to  enjoin  such  breach  of  con-  and  cases  cited, 

tract,   see   chapter   on   "Interference  i^"  142  Fed.  606-1906. 

with  Contract."  's''  224  U.  S.  1-1911. 

^^Juhn  D.  Park  &  Sons  v.  Hart- 


300  Trade  Secrets 

way  as  to  indicate  that  one  gives  up  to  the  pubHc  such  rights 
as  were  his  at  common  law,  as  the  originator  or  the  discoverer 
of  the  secret  process.  But  a  "sale  of  an  article  compounded  by 
secret  process  is  not  publication  of  the  formula  or  device  used 
in  its  manufacture,"  ^^  and  a  person  who  wrongfully  discovers  a 
secret  may  not  set  up  a  sale  of  the  article,  made  by  use  of  the 
secret,  as  a  publication  of  the  secret,  and  hence  a  defense  behind 
which  he  may  fortify  himself. 

Communicating  secret  information  to  many  persons  in  con- 
fidential relationship  with  the  owner  of  the  secret  under  a  con- 
tract not  to  make  the  information  generally  public  is  not  publica- 
tion. Even  the  distributing  of  such  information  generally  to  a 
number  of  customers  paying  therefor  is  not  publication. 

The  Chicago  Board  of  Trade  conducted  an  exchange,  and 
collected  the  quotations  for  transmission  through  the  telegraph 
companies,  to  persons  approved  by  it  and  contracting  with  it. 
Defendant  obtained  and  used  these  quotations  without  plain- 
tiff's authority,  presumably  by  inducing  persons  contracting  with 
plaintiff  to  disregard  their  obligations  to  plaintiff.  Held,  that 
plaintiff  w^as  entitled  to  an  injunction.  The  plaintiff's  quota- 
tions were  held  to  be  in  the  nature  of  a  trade  secret,  which  would 
be  protected.  "The  plaintiff  does  not  lose  its  rights  by  com- 
municating the  results  to  persons,  even  if  many,  in  confidential 
relations  to  itself,  under  a  contract  not  to  make  it  public,  and 
strangers  to  the  trust  will  be  restrained  from  getting  at  the  knowl- 
edge by  inducing  a  breach  of  trust,  and  using  knowledge  ob- 
tained by  such  a  breach."  ^^ 

2"  Tabor  v.  Hoffman,  118  N.  Y.  30,  ed.  821;  7  Sup.  Ct.  529;  Kiernan  v. 

at  p.  36-1889;  23  N.   E.   12,   citing  Manhattan   Quotation    Telegraph    Co., 

Hammer  v.  Barnes,  26  How.  Pr.  (N.  50  How.  Pr.  (N.  Y.)  194  (Sup.  Ct. 

Y.)   174-1863;  M orison  v.  Moat,  21  N.  Y.  Spec.  T.  1876).    Plaintiff  was 

L.   J.   N.   S.    (Ch.)   248-1852;   Mori-  entitled  by  contract  to  the  exclusive 

son  V.  Moat,  20  L.  J.  N.  S.  (Ch.)  513-  use,  for  fifteen  minutes  after  it  was 

1851;  Green  v.  Folgham,  1  Sim.  &  St.  received,  of  all  foreign  financial  news 

398-1823;  Youatt  v.  Winyard,  1  Jac.  &  transmitted   through   the   Associated 

W.  394-1820;  Peabody  v.  Norfolk,  98  Press.      Plaintiff     was     accustomed, 

Mass.  452-1867.  upon  receiving  this  news,  to  telegraph 

2'  Board  of  Trade,  etc.,  v.  Christie  it  immediately  to  his  customers,  who 

Grain  &  Stock  Co.,   198  U.  S.  236-  were   not   restricted   by  any   express 

1904;  49  L.  ed.  1031;  25  Sup.  Ct.  637.  stipulation  in  using  or  repubhshing  it. 

Followe/1   in   Hunt   v.   A'^.    Y.   Cotton  Defendant,    through    an    agent,    ob- 

Exchange,  205  U.  S.  322-1907;  51  L.  taincd  and  sent  to  their  customers  the 


Disclosure  of  a  Secret  in  Court  301 

§  147.  Disclosure  of  a  Secret  in  Court.  —  The  fact  that,  if 
the  secret  is  to  be  used,  it  must  be  examined  and  understood  by 
pubHc  officials,  will  not  prevent  its  owner  enjoining  him  who 
would  fraudulently  publish  it,  nor  will  the  disclosure  of  the 
secret  to  a  court  in  judicial  proceedings  be  held  a  publication. ^^ 
In  an  application  for  an  injunction  against  disclosure  of  a  trade 
secret,  it  is  usually  unnecessary  to  reveal  the  secret  or  disclose 
confidential  information  relating  to  it  —  certainly  not  in  the 
open  court.  Such  hearing  may  be  held  in  camera,  and  is  valid 
if  so  held.  Such  a  disclosure  is  not  a  publication  to  the  world  in 
any  sense. ^^  A  manufacturer  seeking  to  protect  trade  secrets  by 
injunction  will  not,  ordinarily,  be  requested  at  the  trial  to  dis- 
close what  these  secrets  are.^^ 

Evidence  as  to  a  secret  may  be  taken  in  camera  and  sealed, 
where  the  question  involved  is  as  to  whether  or  not  the  plain- 
tiff is  the  owner  of  a  secret. ^"^  It  was  once  held  that  injunction 
is  not  a  proper  remedy  where  plaintiff  alleges  defendant  revealed 
a  trade  secret,  because  the  information  was  no  longer  secret 
when  revealed  to  a  court,  which  revelation  must  take  place 
before  a  court  can  decide;  ^^  but  to-day  measures  are  taken  to  pro- 
tect such  secrets  when  being  considered  by  courts,  and  the  secret 
is  preserved  so  far  as  is  necessary  to  preserve  also  the  cause  of 
action  upon  it. 

In  Baglin  v.  Cusenier  Co.^'^  the  court  deemed  it  was  unable 
to  decide  as  to  the  imitation  of  plaintiff's  cordial  because  it 
did  not  know  the  ingredients  of  it,  holding  that  more  than 
opinion  and  speculation  is  necessary  to  show  imitation,  espe- 

same  quotations,  and  their  agent  was  "  Peabody  v.  Norfolk,  98  Mass.  452- 

shown  to  have  obtained  his  liiforma-  1867. 

tion  from  plaintiff's  tapes  and  slips  "  Stone  v.   Grasselli  Chemical  Co., 

in  the  office  of  his  customers.     Held,  65  N.  J.  Eq.  756-1903;  55  Atl.  736; 

that  plaintiff  was  entitled  to  restrain  63  L.  R.  A.  344. 

defendant  from  publishing  plaintiff's  ^4  Taylor  Iron  &  Steel  Co.  v.  Nichols, 

foreign    financial    reports,    the    news  70  N.  J.  Eq.  541-1905;  61  Atl.  946; 

being   plaintiff's   property,    plaintiff's  Sterling   Varnish  Co.  v.   Macon,  217 

right  not  being  lost  by  the  transmis-  Pa.  St.  7-1907;  66  Atl.  78. 

sion  to  his  customers,  and  defendant  ^^  Taylor    Iron     &    Steel    Co.    v. 

being  deemed  to  have  acquired  his  Nichols,  69  Atl.  186-1908  (N.  J.  Er. 

information    by    inducing    plaintiff's  &  App.). 

customers  to  violate  the  tacit  under-  ^^  Deming  v.  Chapman,  11  How.  Pr. 

standing  implied  from  the  nature  of  (N.  Y.)  382-1854. 

their  contract  with  plaintiff.  27 154  Fed.  25-1908  (C.  C.  A.). 


302 


Trade  Secrets 


daily  "when  the  party  upon  whom  the  burden  rests  has  it  in 
his  power  to  establish  fraud,  if  it  exists,  by  proof  which  it  will 
be  practically  impossible  to  contradict,"  per  Coxe,  J. 

§  148.  Discovery  of  a  Secret  by  Lawful  Means.  —  The  right 
to  legally  discover  and  use  a  secret  was  early  recognized.  Hard- 
wicke,  Ld.  Ch.,  said  in  Gibblett  v.  Read,^^  "So  in  the  case  of 
Tipping,  if  anybody  had  thought  of  his  nostrum,  as  he  had  no 
patent,  any  discoverer  might  have  sold  it." 

When  the  secret  information  becomes  known  to  the  defendant 
through  his  own  efforts,  no  action  lies  against  him.  He  has  a 
right  to  discover  for  himself  the  ingredients  of  a  secret  medical 
formula  by  study  of  the  product  itself,  if  it  be  sold  publicly,  or 
he  may  discover  the  secret  of  a  method  of  manufacture  from 
a  study  of  the  manufactured  article.  If  he  acquires  the  hidden 
information  honestly,  he  may  use  it  as  he  will,  assuming  of  course 
there  is  no  question  of  patent ;  but  a  discovery  of  a  secret  by  un- 
fair means,  such  as  bribing  a  clerk  of  the  owner  of  the  secret,  or 
stealing  or  copying  the  information  from  the  owner,  will  not  be 
protected.^' 


2«  9  Mod.  459-1743. 

2^  Tabor  v.  Hoffman,  118  N.  Y.  30- 
6-1889;  23  N.  E.  12.  But  because 
this  discovery  may  be  possible  by 
fair  means,  it  will  not  justify  a  dis- 
covery by  unfairness,  such  as  a  bribery 
of  a  clerk,  who,  in  the  course  of  his 
employment,  had  aided  in  compound- 
ing the  medicine,  and  had  thus  be- 
come familiar  with  the  formula.  The 
courts  have  frequently  restrained  per- 
sons, who  have  learned  a  secret 
formula  from  compounding  medicine 
and  beverages  and  the  like  while 
in  the  employment  of  a  proprietor, 
from  using  it  themselves  or  imparting 
it  to  others  to  his  injury.  Watkins  v. 
Larulon,  52  Minn.  389-1893;  54  N.  W. 
193;  19  L.  R.  A.  236.  In  1856,  Ward 
owned  a  receipt  for  "Ward's  Botanical 
Liniment."  The  same  year,  he  sold  to 
Sands  the  formula  and  granted  him  the 
right  to  sell  it  in  Minnesota.  It  came 
to  be  known  as  "Dr.  Ward's  Lini- 


ment." In  1868,  plaintiff  claimed  tlie 
sole  right  to  sell  "Ward's  Liniment" 
in  Minnesota  and  threatened  Sands 
with  prosecution  if  he  sold  the  Hniment 
longer  under  that  name.  Conse- 
quently Sands  changed  the  name  to 
"T.  H.  Sands'  Celebrated  Liniment." 
The  Hniment  was  never  patented. 
Since  1870,  the  plaintiff  has  sold  the 
liniment  substantially  the  same  as 
Ward's  under  the  name  "Dr.  Ward's 
Vegetable  Anodyne  Liniment."  Sub- 
sequent to  1885,  defendant  manu- 
factured and  sold  a  liniment  similar 
to  Ward's  called  "Dr.  Hoffman's 
Vegetable  Anodyne."  In  1889,  Sands 
sold  to  defendants  the  Ward  for- 
mula. Since  that  time  they  have  sold 
it  under  the  label  "Dr.  Ward's  Lini- 
ment, Landon  &  Burchard,"  etc. 
Held,  that  as  the  liniment  had  not 
been  patented,  anyone  lawfully  ac- 
quiring the  knowledge  of  its  prepa- 
ration had  a  right  to  use  it,  and  to 


Betrayal  of  Secrets  by  Employees  303 

An  illustration  of  a  fair  use  of  a  secret  which  resulted  in  loss 
to  one  rightfully  in  possession  of  it,  is  found  in  Stewart  v.  Hook.^^ 
T.  prior  to  1894  had  sold  a  cure  for  the  opium  and  morphine 
habit,  known  as  the  ''Acme  Opium  Cure."  T.  had  invented 
and  was  the  sole  owner  of  the  cure.  The  formula  for  it  was  a 
secret  known  only  to  T.  In  1894,  T.  sold  to  each  of  the  two 
plaintiffs  a  one-half  interest  in  the  cure.  In  1897,  T.  sold  the 
same  formula  and  receipts  to  the  defendant,  who  began  to  manu- 
facture under  the  same  name,  not  by  public  advertising,  but 
by  secret  correspondence  under  T.'s  name.  Until  1902,  this  was 
unknown  to  the  plaintiffs,  whose  business  had  greatly  suffered 
by  reason  of  the  defendant's  action.  Held  on  the  authority  of 
Chadwick  v.  Covell,^^  that  as  the  defendant  did  not  come  into 
possession  of  the  formula  in  any  unfair  way  and  had  not  com- 
mitted any  fraud  or  breach  of  trust  of  which  the  plaintiffs  could 
complain,  he  could  not  be  held  liable;  that  the  plaintiffs  sued 
the  wrong  man  and  should  have  brought  an  action  against  T., 
who  by  violating  his  agreement  brought  about  the  damage  of 
which  the  plaintiffs  complain. 

After  the  death  of  the  owner  of  a  secret  unpatented  process, 
anyone  who  discovers  the  process  by  legitimate  methods  may 
use  it  for  mercantile  purposes  and  call  it  by  the  name  of  the 
original  discoverer.^^ 

Title  to  a  secret  which  has  been  dishonestly  obtained  is  good 
against  all  the  world,  except  the  person  from  whom  it  has  been 
dishonestly  obtained  and  his  assignees.  It  has  been  held,  how- 
ever, that  where  a  company  was  alleged  to  have  obtained  knowl- 
edge of  a  trade  secret,  seemingly  without  dishonest  intention, 
but  from  persons  who  were  dishonestly  using  the  knowledge  ob- 
tained from  the  discoverer,  a  person  bound  to  such  company  by 
contract  or  confidence  when  sued  by  the  company  for  a  breach 
of  the  contract  or  confidence,  could  not  set  up  that  the  company 
had  no  right  to  the  secret. ^^ 

§  149.  Violation  of  Contract  of  Employment  by  Betrayal  of 

say  that  it  was  made  in  accordance  ^°  118  Ga.  445;  45  S.  E,  369;  63 

with  Ward's  formula;  that  the  com-  L,  R.  A.  255. 

mon  name  of  the  Uniment  had  come  ^'  151  Mass.  190. 

to  be  "Dr.  Ward's  Liniment."    Con-  ^^  James  v.  James,  13  Eq.  421-1872. 

sequently  the  phiintiff  could  not  ac-  ^'  Vulcan  Detinning  Co.  v.  Ameri- 

quire  the  sole  right  to  the  name.  can  Can  Co.,  67  N.  J.  Eq.  243-1904; 

58  Atl.  290. 


304  Trade  Secrets 

Secrets.  —  Many  of  the  cases  involving  a  violation  of  a  trade 
secret  arise  over  the  betrayal  of  an  employer's  confidence  by  an 
employee.  Where  the  contract  of  employment  includes  a  clause 
binding  the  employee  not  to  impart  to  anyone  the  knowledge  he 
gains  through  his  employment  except  by  order  of  his  employer, 
the  law  enforces  that  clause.  It  is  not  against  public  policy  or 
in  restraint  of  trade.  See  §  145.  The  object  of  the  court  in  up- 
holding it,  is  to  preserve  the  employer's  property  in  the  secret. 
"Courts  of  equity  will  restrain  a  party  from  making  a  disclosure 
of  secrets  communicated  to  him  in  the  course  of  a  confidential 
employment;  and  it  matters  not  in  such  cases  whether  the  secrets 
be  secrets  of  trade  or  secrets  of  title  or  any  other  secrets  of  the 
party  important  to  his  interests."  ^"^  To  warrant  the  issuance  of 
an  injuncti®n  against  a  former  employee,  it  must  appear  that 
the  defendant  made  use  not  only  of  some  secret  that  the  plaintiff 
shares  with  him,  but  it  must  also  appear  that  the  defendant's 
knowledge  of  it  was  obtained  by  him  through  and  by  means  of 
his  having  been  in  plaintiff's  employ.  No  action  lies  to  restrain 
a  former  agent  of  a  manufacturer  from  selling  an  article  alleged 
to  imitate  the  manufacturer's,  it  not  appearing  that  the  article 
was  patented  or  that  the  former  agent  availed  himself  of 
secret  information  obtained  while  in  the  manufacturer's  em- 
ploy.^^ 

One  of  the  earliest  and  most  important  cases  on  this  point  is 
Morison  v.  Moat,^^  decided  in  1851,  where  the  right  of  employers 
to  restrain  employees  from  betraying  secrets  was  upheld.  Mori- 
son  invented  a  medicine,  entered  into  partnership  with  Moat, 
reserving  all  rights,  and  told  Moat  the  secret.  Morison  reserved 
the  secret  against  all  the  world  except  Thomas  Moat,  and  Moat 
was  bound  not  to  reveal  it.  Moat  obtained  a  place  in  the  con- 
cern for  defendant  Moat,  his  son,  Morison  never  communicated 
the  secret  to  defendant.  His  father  had  no  right  to  do  so,  and 
the  court  decided  that  the  defendant  obtained  the  secret  of  the 
medicine  surreptitiously  and  without  sanction  of  his  partners. 
"The  defendant  derives  under  that  breach  of  faith  (his  father's 
in  telling  him  the  secret  against  the  terms  of  his  contract),  and 
I  think  he  can  gain  no  title  by  it"  (p.  263).    On  appeal  the  case 

"  2  Story  Eq.  Jur.,  §  952.  1906;  79  N.  E.  9,  reversing  121  111. 

"  Mahler  v.  Sanche,  223  111.  136-      App.  247. 

'« 9  Hare,  241-1851. 


Betrayal  of  Secrets  by  Employee's 


305 


was  affirmed, ^^  and  it  was  held  that  "there  is  no  doubt  whatever 
that  where  a  party  who  has  a  secret  in  trade,  employs  persons 
under  contract,  express  or  implied,  or  under  duty  express  or 
implied,  these  persons  cannot  gain  knowledge  of  that  secret  and 
then  set  it  up  against  their  employer"  (at  p.  248).  Where  an 
employee  is  given  increased  wages  and  agrees  not  to  disclose 
the  secrets  of  the  business  he  ''has  no  right  to  use  the  secrets  so 
obtained  for  his  own  private  use  or  reveal  them  to  others."  ^^ 

An  injunction  will  lie  against  the  use  of  a  secret  without  any 
proof  that  any  disclosure  has  been  made  by  the  defendant.  An 
apprentice  of  plaintiff  became  his  employee.  Just  before  leaving 
he  compiled  and  took  away  a  table  of  dimensions  of  the  various 
types  of  fire  engines  which  plaintiff  made  and  which  dimensions 
plaintiff  claimed  to  be  trade  secrets.  No  proof  was  given  of 
disclosure.  Defendant  was  a  draughtsman.  Interim  injunction 
granted. ^^  Disclosure  of  methods  of  business,  receipts  for  medi- 
cines, and  all  sorts  of  confidential  information,  will  be  protected 
by  equity  against  fraudulent  disclosure.^"    Actual  disclosure  need 

"  21  L.  J.  N.  S.  (Ch.)  248.  Div.    (N.   Y.)   42-1907;    103   N.   Y. 

'8  There  are  numerous  cases  holding     Supp.  936.    Defendant  had  been  em- 


that  where  there  is  a  written  agree- 
ment, that  an  employee  will  not  after 
leaving  his  master's  employ  engage  in 
the  same  line  or  similar  line  of  busi- 
ness, and  will  not  furnish  to  others 
lists  of  customers  or  information  of  any 
kind  or  nature  pertaining  to  his  em- 
ployer's business,  that  a  court  of 
equity  will  intervene  to  enforce  the 
observation  of  that  agreement  by  in- 
junction, Davies  v.  Racer,  72  Hun, 
43;  Eastman  Kodak  Co.  v.  Reichen- 
hach,  79  id.  183;  Little  v.  Gallus,  4  App. 
Div.  569 ;  National  Gum  &  Mica  Co.  v. 
Braendly,  27  id.  219  at  p.  224;  22  Cyc. 
867;  Magnolia  Metal  Co.  v.  Price,  65 
App.  Div.  276;  Mutual  Milk  &  Cream 
Co.  V.  Prigge,  112  id.  652;  Mutual 
Milk  &  Cream  Co.  v.  Heldt,  120  id. 
795;  Fralich  v.  Despar,  165  Pa.  St. 
24-6-1894;  30  Atl.  521. 

'3  Merryweather  v.  Moore,  2  Ch. 
518-1892. 

^o  Tolman    v.    Mulcahy,    119    App. 


ployed  by  plaintiff,  a  lender  of  money, 
under  a  contract  that  she  would  di- 
vulge to  no  outsider  anything  regard- 
ing the  system  or  methods  of  the 
plaintiff's  business,  and  would  not, 
within  two  years  after  leaving  plain- 
tiff's employ,  engage  in  the  same 
business  as  principal  or  employee. 
She  left  plaintiff's  employ  and  became 
an  employee  of  a  firm  doing  a  similar 
business,  and  it  was  alleged  that  she 
was  communicating  to  her  new  em- 
ployers confidential  information  ac- 
quired in  plaintiff's  employ.  Held, 
that  while  under  all  the  circumstances 
no  preliminary  injunction  should  issue 
against  her  remaining  in  a  third  per- 
son's employ,  defendant  was  prop- 
erly enjoined  from  communicating  or 
divulging  plaintiff's  forms  or  meth- 
ods and  from  sending  letters  to  plain- 
tiff's customers. 

Youatt  V.  Wimjard,  IJ.  &  W.  394- 
1820.     Defendant,  while  in  plaintiff's 


306 


Trade  Seckkt.s 


not  be  proven.     It  is  enough  that  such  disclosure  is  apprehended 
by  plaintiff.     See  §  153. 

§  150.  Employees  are  Bound  by  Implied  Contract  not  to 
Disclose  Secrets. —  In  the  absence  of  such  a  clause  in  the  con- 
tract of  employment  the  law  will,  when  necessary  for  the  pro- 
tection of  the  property  of  the  employer,  import  into  the  contract 
a  prohibition  against  a  betrayal  of  his  trust  and  confidence  and 
against  imparting  any  confidential  information  to  others.  In 
fact  such  a  stipulation  of  the  character  is  probably  a  part  of 
every  employment  whether  actually  expressed  or  not.  In 
Empire  Steam  Laundry  v.  Luzier,^^  a  laundry  driver  was  sup- 
plied with  a  list  of  customers,  which  he  was  to  keep  up  to  date. 
Held  that  he  was  not  at  liberty  to  turn  over  this  list  to  a  new 
employer,  nor  to  solicit  those  on  that  list  to  trade  with  the  new 
employer.  There  was  an  express  contract ;  but,  the  validity  of  this 
being  questioned,  the  decision  was  based  on  the  obligation,  en- 
forcible  in  equity,  growing  out  of  the  relation  between  the  parties. 


employ,  had  surreptitiously  copied  re- 
ceipts for  veterinary  medicines,  and 
after  leaving  his  employ  began  to  sell 
the  medicines,  with  printed  directions 
for  their  use,  which  were  almost  literal 
copies  of  plaintiff's.  Upon  the  ground 
that  there  had  been  a  breach  of  confi- 
dence, the  court  granted  an  injunction 
restraining  defendant  from  using  or 
communicating  the  receipts,  and  from 
printing  and  publishing  the  directions 
for  their  use. 

The  National  Gum  &  Mica  Co.  v. 
Braendbj,  27  App.  Div.  (N.  Y.)  219; 
51  N.  Y.  Supp.  93.  Delery  owned  a 
small  business,  the  assets  of  which  con- 
sisted almost  wholly  in  secret  processes 
for  making  various  articles.  Defendant 
approached  plaintiff  and  offered  to  sell 
him  the  secrets,  and  plaintiff  agreed,  if 
the  sale  was  made,  to  employ  the  de- 
fendant, and  defendant  agreed  not  to 
communicate  the  processes  to  any- 
body else.  Defendant  remained  in 
plaintiff's  employ  only  a  short  time, 
but  he  refused  to  disclose  to  the  plain- 


tiff the  processes,  and  finally  left  the 
plaintiff  and  organized  a  corporation 
for  carrying  on  the  same  business.  He 
also  agreed  that  he  would  not  dis- 
close any  secrets  that  he  learned  from 
the  plaintiff  while  in  his  employ. 
Held,  the  power  to  restrain  the  viola- 
tion of  a  secret  protected  by  a  contract 
is  well  settled.  The  vendee  employed 
the  manager  as  long  as  he  desired  to 
stay  in  its  employ,  and  was  willing  to 
continue  to  employ  him,  and  hence 
performed  its  part  of  the  contract. 
That  the  court  had  power  to  punish 
defendant  for  violating  an  injunction 
restraining  him  from  disclosing  the 
secret  processes  bought  by  the  plain- 
tiff, and  also  the  secrets  which  defend- 
ant had  learned  while  in  plaintiff's 
employ. 

^'  165  Cal.  95  (1913),  [citing  Robb 
v.  Green,  L.  R.  (1895),  2  Q.  B.  D.  1, 
10].  Wilkop  Holmes  v.  Boyce,  61 
Misc.  (N.  Y.)  126-131  afd.  no.  op. 
131  A.  D.  (N.  Y.)  922. 


Employees  Bound  not  to  Disclose  Secrets        307 

An  early  case  involving  this  rule  is  referred  to  by  the  English 
Chancery  Court.  "  *  *  *  I  mentioned  during  the  argument  a 
case  which  is  unreported,  so  far  as  I  know,  but  which  has  some 
bearing  on  these  points.  It  was  a  case  of  a  master  tailor  and  his 
foreman  cutter.  The  foreman  cutter,  whilst  in  the  employ  of 
the  master  tailor,  cut  out  the  ordinary  patterns  for  the  dress  of 
his  master's  customers  —  those  brown  paper  things  which  may 
be  seen  in  many  a  tailor's  shop,  but,  being  about  to  leave  his 
master's  service,  and  to  set  up  for  himself  an  independent  busi- 
ness, and  being  desirous  of  attracting  the  custom  of  his  master's 
customers,  he  made,  whilst  in  the  employ  of  the  master  tailor, 
copies  of  those  brown  paper  patterns;  and,  setting  up  for  him- 
self, he  took  them  away  with  him,  and  made  use  of  them,  by  in- 
forming those  whom  he  supposed  would  deal  with  him  (his  late 
master's  customers)  that  he  had  their  patterns,  and  he  could 
make  their  clothes  without  putting  them  to  the  trouble  of  at- 
tending to  be  measured  again.  The  master  tailor  obtained  an 
injunction  against  him  for  using  this,  which,  in  substance,  was 
information  obtained  by  him  exclusively  for  the  benefit  of  the 
master  while  in  the  master's  employment. "^^ 

Plaintiff  sold  typewriter  ribbons.  Defendant  was  in  his  em- 
ploy from  1886  to  1894,  when  he  left  and  organized  the  Rochester 
Ribbon  &  Carbon  Co.,  and  began  to  make  goods  by  a  process 
use.d  by  the  plaintiff.  Wliile  in  plaintiff's  employ  he  copied 
every  formula  he  used.  Held,  defendant  was  in  a  confidential 
relation  to  plaintiff  and  in  that  relationship  gained  knowledge 
of  his  processes.  He  knew  of  the  care  exercised  to  keep  the 
secret  and,  in  violation  of  the  confidence  reposed  in  him,  sur- 
reptitiously made  memoranda  of  the  formulas,  and  was  now 
using  them  and  other  knowledge  obtained  while  in  plaintiff's 
employ  to  run  a  rival  establishment.  The  law  raises  an  implied 
contract  where  none  exists,  ''that  an  employee  who  occupies  a 
confidential  relation  toward  his  employer  will  not  divulge  any 
trade  secrets  imparted  to  him,  or  discovered  by  him  in  the  course 
of  his  employment,  and  we  do  not  see  why  the  defendants.  Callus 
&  Bostwick,  are  not  under  just  as  strong  an  obligation  to  ob- 
serve and  keep  secret  the  trust  reposed  in  them  as  they  would  be 
had  they  received  the  contract  which  the  law  implies  to  writing."  ^^ 

*^Lamb   v.    Evans,    3    Ch.    462-8-  '^Little    v.    Gallus   et   al,    4   App. 

1892.  Div.  (N.  Y.)  569-74-1896;  38  N.  Y. 


308 


Trade  Secrets 


Not  all  contracts  of  employment  will  sustain  an  injunction  of 
this  sort.  Actual  knowledge  of  business  secrets  on  the  part  of 
the  employee,  acquired  from  his  employment,  is  essential,  and  it 
must  be  knowledge  of  some  facts  known  only  to  the  employer 
or  those  in  his  confidence  or  under  contract  with  him. 

The  implied  obligation  of  an  employee  not  to  disclose  a  trade 
secret,  such  as  a  process  of  manufacture,  is  conditioned  upon  its 
having  been  actually  treated  as  a  secret  and  preserved  as  such, 
so  that  the  employee  must  be  deemed  to  have  been  aware  of  its 
secret  character. ^^ 

An  agreement  by  an  employee  that  all  his  inventions  shall  be- 
long to  the  employer  and  shall  perpetually  be  kept  secret  if  the 
employer  so  requires,  is  not  unconscionable  nor  against  public 
policy.'*'' 

A  contract  with  an  employee  which  forbids  him  to  divulge, 
during  the  term  of  the  agreement  or  afterward,  ''any  informa- 
tion of  any  nature  now  known  to  him,  or  hereafter  acquired  by 
him  during  the  term  of  his  agreement,  relating  to  the  process  of 
steel  making,"  etc.,  was  held  to  compel  the  employee  to  either 


Supp.  487;  Thum  &  Co.  v.  Tloczyn- 
ski,  114  Mich.  149-1897;  38  L.  R.  A. 
200;  72  N.  W.  140.  Plaintiffs  manu- 
factured fly-paper.  The  process  was 
regarded  a  secret.  The  public  were 
excluded  from  the  premises  where  it 
was  made.  The  employees  at  one 
machine  were  not  allowed  to  inspect 
the  other  machines.  The  business  of 
the  firm  grew.  The  defendant  was  in 
the  employ  of  the  plaintiffs.  He  left 
their  employ  and  began  to  engage  in 
the  manufacture  of  the  same  product. 
Held,  that  the  evidence  showed  that 
the  business  and  the  process  were  a 
secret;  that  the  defendant  knew  that 
fact;  that  the  employment  was  on 
the  agreement  that  the  defendant 
would  not  communicate  information 
received  by  him  to  the  harm  of  his 
employer;  that  an  express  agree- 
ment existed  between  the  parties,  and 
even  though  there  was  no  express 
agreement    an   agreement   would   be 


implied  from  the  facts  on  which  the 
defendant  could  be  restrained.  (Cit- 
ing Story  Eq.  Jur.,  §§323,  952.) 
That  it  was  not  against  pubUc  inter- 
est to  allow  an  employer  to  make  such 
conditions  with  his  employees,  but 
was  to  the  advantage  of  both  parties 
that  such  a  contract  should  be  made. 

G.  F.  Harvey  Co.  v.  National  Drtig 
Co.,  75  App.  Div.  (N.  Y.)  103-1902; 
77  N.  Y.  Supp.  674.  L.  J.  Har- 
vey was  in  employ  of  plaintiff  as  su- 
perintendent where  he  learned  secret 
of  compounding  certain  medicines. 
He  left  plaintiff's  employ  and  entered 
that  of  defendant  to  whom  plaintiff 
claimed  he  had  revealed  the  secret 
process  learned  from  plaintiff  while 
in  its  employ.      He  was  enjoined. 

**  Hamilton  Mfg.  Co.  v.  Tnbbs  Mfg. 
Co.,  216  Fed.  401-7-1908,  and  cases 
cited. 

«  Thibodeau  v.  Hildreth,  124  Fed. 
892. 


Title  to  Skcrets  Discovered  by  Employee         309 

work  for  this  employer  or  remain  idle.  Such  a  contract  will  not 
be  enforced. ^^ 

Where  a  general  insurance  agent  left  his  employer  and  at- 
tempted to  divert  policy-holders  in  the  company  formerly  em- 
ploying him,  to  his  later  employer,  no  injunction  was  granted,  as 
the  relation  to  the  employer  was  not  confidential  in  the  sense  that 
he  acquired  knowledge  of  any  business  secret.  Persons  might 
have  taken  out  policies  on  account  of  friendship  for  the  agent. 
There  was  no  reason  why  he  should  not  solicit  their  business  for 
new  company  he  represented.^^     See  §  177. 

§  151.  Title  to  Secrets  Discovered  by  Employee  as  a  Part  of 
his  Work.  —  Often  persons  are  employed  for  the  purpose  of  de- 
voting their  time  and  brains  to  the  invention  of  new  methods 
relating  to  the  business  of  their  employer.  He  pays  them  a 
salary  and  defrays  the  expenses  of  the  experiments,  and  he  is 
held  to  be  entitled  to  the  ownership  of  all  inventions  and  secrets 
discovered  by  them  while  in  his  employ.  Such  persons  will  be 
enjoined  from  disclosing  to  others  any  of  the  information  so  ac- 
quired, and  such  an  injunction  will  issue  also  against  any  who,  by 
means  of  information  acquired  through  such  persons,  make  use 
of  such  inventions.  This  relief  is  allowed  on  an  implied  contract 
which  the  law  finds  in  the  relation  of  persons  so  employed,  that 
one  will  not  betray  any  secret  of  his  employer,  and  further,  be- 
cause such  betrayal  of  a  secret  would  be  a  breach  of  trust  as  a 
court  of  equity  will  condemn.*^ 

*«  Taylor  Iron  &  Steel  Co.  v.  Nichols,  that  Taggart  should  finish  machine. 

70  N.  J.  Eq.  541;  69  Atl.  186-1908.  Later    Taggart    was    employed    by 

See  also  Alger  V.  Thatcher,  19  Vick.  51;  Westervelt    to    build    machines    like 

Albright  v.  Teas,  37  N.  J.  Eq.  171.  those  he  had  built  for  National  Paper 

"  Stein  V.  National  Life  Assn.,  105  Company,  and  at  this  time  Wester- 

Ga.  821-1898;  32  S.  E.  615;  46  L.  velt  knew  nature  of  contract  of  Tag- 

R.  A.   150.     See  also  High  Injunc-  gart  with  National  Paper  Company 

tions,  §  19.  and  that  machine  was  trade  secret. 

*^  Westervelt  v.   National  Paper  &  "Said  machine  was  a  secret  and,  un- 

Supply   Co.,    154   Ind.   673-1900;   57  der  the  facts  alleged,  even  if  no  agree- 

N.   E.   552.     One  Taggart  was  em-  ment  was  made,  one  would  be  implied 

ployed  by  National  Paper  Company,  that  he  (Taggart)  was  not  to  disclose 

He  was  at  work  on  an  incomplete  the  secret  of  the  construction  of  the 

tube  machine,  and  it  was  understood  machine,  or  impart  any  information 

that  all  improvements  made  by  Tag-  by  which  anyone  could  construct  such 

gart  to  said  machine  should  belong  a  machine.    He  occupied  a  confidential 

to    National    Paper    Company,    and  relation    to    the    appellee    (National 


310 


Trade  Secrets 


If  an  employee  is  to  be  held  responsible  for  keeping  the  se- 
crets of  his  employer  he  should  receive  notice  when  the  secret  is 
disclosed  to  him  or  he  is  made  aware  of  its  existence  that  it  is  a 
secret.  "  To  enforce  on  the  individual  defendants  the  duty  of 
preserving  the  secrets,  if  any,  pertaining  to  the  complainant's 
business,  it  must  be  shown  that  they  knew  that  its  methods  of 
manufacture  and  machines  were  in  fact  secret."'*^" 

But  in  the  absence  of  an  express  stipulation,  it  is  a  question  of 
fact,  depending  upon  the  circumstances  and  the  conduct  of  the 
parties,  whether  or  not  the  understanding  of  the  parties  was,  or 
must  be  taken  to  have  been  that  everything  devised  or  invented 
by  the  employee  was  to  belong  exclusively  to  his  employer. 

Where  an  employee  of  especial  skill  aided  in  the  development 


Paper  Company)  and  in  such  case  the 
law  raises  an  implied  contract  be- 
tween him  and  them  that  the  employee 
will  not  disclose  any  trade  secret  im- 
parted to  him  or  discovered  by  him  in 
the  course  of  his  employment.  A  dis- 
closure of  such  secrets  thus  acquired 
is  not  only  a  breach  of  contract 
on  his  part  but  is  a  breach  of  trust 
which  a  court  of  equity  will  pre- 
vent" (p.  679).  Held,  injunc- 
tion would  lie  against  the  employee 
to  prevent  his  manufacturing  the 
machine  for  others.  It  would  lie 
against  third  parties  reproducing  the 
machine  from  plans  given  by  the 
employee.  The  fact  that  there  were 
in  existence  machines  which  would 
fold  paper,  which  machines  were 
trade  secrets  not  known  to  the 
National  Paper  Company,  as  show- 
ing that  the  machine  was  not  a  se- 
cret, did  not  make  the  petition  de- 
murrable or  raise  a  presumption  that 
it  was  the  same  kind  of  a  machine. 
Neth  V.  Ohmer,  30  App.  D.  C.  478- 
1908.  One  who  conveys  to  employees 
information  and  orders  that  they 
make  a  machine,  is  entitled  to  their 
skill  and  ingenuity,  and  to  any  patent 


or  secret  process  of  value  which  they 
discover. 

Eastman  Kodak  Co.  v.  Reichen- 
bach  et  al,  79  Hun  (N.  Y.)  194, 
20  N.  Y.  Supp.  110-1892.  Plaintiff 
manufactured  Kodak  cameras,  etc. 
Defendants  were  in  plaintiff's  em- 
ploy under  an  agreement  to  give 
plaintiff  all  benefit  of  any  inventions 
they  made.  Action  was  to  restrain 
defendant  from  reveaUng  secrets 
learned  in  course  of  their  employ- 
ment.   Injunction  granted. 

Stone  V.  Grasselli  Chemical  Co.,  65 
N.  J.  Eq.  756-1903;  55  Atl.  736;  63  L. 
R.  A.  344.  One  Goss  was  an  employee 
of  plaintiffs  from  1892  to  1901.  Dur- 
ing this  time  plaintiff  had  improved  a 
secret  process  by  a  secret  method  of 
mixing  the  ingredients.  Goss  knew 
this  secret  method.  He  left  plain- 
tiffs' employ,  entered  that  of  defend- 
ants, and  disclosed  the  method.  Held, 
he  was  under  an  express  contract  not 
to  disclose  the  secret.  Injunction 
granted  against  Goss  and  defendant. 

*^  Cincinnati  Co.  v.  Dodds,  19 
Wkly  L.  BuL,  Ohio,  84  Taft,  J.  See 
also  Westemset  v.  National  Paper  Co., 
154  Ind.  673,  57  N.  E.  552;  Hamilton 
V.  Tubbs,  216  F.  401-07. 


Title  to  Secrets  Discovered  by  Employee         311 

of  inventions,  though  not  employed  to  originate  them,  the  court 
said  that  while  he  was  not  at  liberty  to  appropriate  trade  secrets 
of  his  employer,  yet  "no  obligation  rested  upon  him  to  forego 
the  exercise  of  his  inventive  powers,  even  if  they  were  incited  be- 
cause of  knowledge  necessarily  derived  from  the  performance 
of  his  contractual  duties.""*^  It  was  further  held  in  this  case  that 
where  the  employee  had  used  part  of  his  working  time  in  design- 
ing and  making  new  machinery  afterwards  used  for  his  individual 
profit,  he  could  not  be  compelled  to  account  for  and  return  the 
salary  received  by  him,  though  he  might  be  liable  in  damages 
for  breach  of  contract. 

"Every  clerk  employed  in  a  merchant's  counting  house  is 
under  an  implied  contract  that  he  will  not  make  public  that 
which  he  learns  in  the  execution  of  his  duty  as  clerk  *  *  * 
and  if  he  avails  himself  surreptitiously  of  the  information  which  he 
could  not  have  had  except  from  a  person  guilty  of  a  breach  of 
contract  in  communicating  it,  I  think  he  could  not  be  permitted 
to  avail  himself  of  that  breach  of  contract. "^°  Where  one  who 
was  employed  as  an  inventor  discovered  in  the  course  of  his  em- 
ployment a  valuable  process  and  attempted  to  drive  a  more  fa- 
vorable bargain  as  to  his  wages  as  a  consideration  for  revealing 
the  discovery,  the  court  gave  to  the  employers  an  order  com- 
pelling disclosure  to  them  and  forbidding  disclosure  to  anyone 
else,  and  the  injunction  issued,  although  the  employee  had  been 
dismissed.  ^^ 

There  are  limits  to  the  information  which  an  employee  may  not 
divulge.  He  usually  may  disclose  where  his  employer  buys  ma- 
terial, what  his  prices  are,  and  his  customers, ^^  after  his  employ- 
ment is  ended. 

The  term  "  employee  "  as  here  used  includes  not  only  workmen 
and  artisans,  but  all  persons  who  act  for  another  in  a  capacity 
which  demands  of  the  employed  good  faith  and  confidence.  For 
an  employee  to  quit  the  employment  and  then  use  in  the  service 
of  a  rival  information  of  a  confidential  nature  gained  in  the  prior 
employment  is  contrary  to  good  faith  and  fair  dealing,  and  all 

*^  American  Stay  Co.  V.  Delaney,  211  '•^Silver  Spring  Co.   v.   Woolworth, 

Mass.  229-1912.  16  R.  I.  729-1886;  19  Atl.  528. 

50  Tipping  v.  Clarke,  2  Hare,  393.  "  Salomon  v.  Hertz,  40  N.  J.  Eq. 

Cited  in  Prince  Albert  v.  Strange,   1  400-1885;  2  Atl.  379. 
Hall  &  T.  1-1849  (at  p.  24). 


312  Trade  Secrets 

such  actions  are  not  only  a  breach  of  trust,  but  are,  if  such  a 
presumption  be  necessary,  in  violation  of  impHed  conditions 
against  such  acts,  which  conditions  the  law  will  import  into  any 
contract  of  employment.  As  seen  above,  the  relation  of  an  in- 
surance agent  has  been  held  not  confidential  within  the  meaning 
of  this  rule,  but  an  injunction  has  been  issued  in  England  against 
an  agent  of  an  advertising  house  who,  on  leaving  it,  used  informa- 
tion gained  there  in  his  new  position.  In  this  case,  when  the 
agreement  of  employment  terminated,  Evans  went  to  a  rival 
house  and  used  in  its  employ  materials,  headings,  etc.,  which  he 
had  obtained  while  with  plaintiff.  Such  use  violated  the  good 
faith  of  the  employment,  and  good  faith  underlies  the  whole  of 
an  agent's  obligations  to  his  principal;  an  agent  has  no  right  to 
employ,  as  against  his  principal,  material  obtained  only  for  his 
principal  and  in  course  of  his  agency.  "The  defendant,  Evans, 
was  exclusively  employed  by  the  plaintiff  to  collect  the  adver- 
tisements in  certain  districts,  and  in  regard  to  the  material  things, 
such  as  blocks  and  the  like,  it  was  the  duty  of  these  defendants 
to  furnish  the  plaintiff  with  them  for  the  purpose  of  his  work" 
(id.  p.  468).  ''As  well  as  I  could  make  out  from  the  evidence, 
the  defendant,  Evans,  has  retained  some  of  these  blocks  and 
other  materials,  and  also  the  notes  which  they  have  made  during 
the  term  of  their  exclusive  employment.  In  my  opinion,  as  be- 
tween the  plaintiff  and  the  defendants,  these  things  could  only 
be  used  wrongfully  as  against  the  plaintiff. "^^  An  agreement  not 
to  communicate  a  trade  secret  applies  to  agents  of  the  one  con- 
tracting. On  no  other  basis  could  vendee  safely  buy.  WTiile 
such  a  contract  of  purchase  is  a  personal  covenant,  it  relates  to 
the  actions  of  others,  as  well  as  to  the  acts  of  the  vendor  himself.^'* 
§  152.  Unlawful  Secrets.  —  The  rule  which  prohibits  former 
employees  from  making  disclosure  of  their  employers'  secrets 
and  of  information  acquired  in  course  of  their  employment,  does 
not  apply  to  facts  acquired  by  them  which  show  fraudulent  con- 
duct on  the  part  of  one  or  more  of  the  emploj^ers  to  the  injury  of 
persons  dealing  with  them.  The  rules  applicable  to  trade  secrets 
do  not  apply  to  such  a  case.  There  can  be  no  lawful  confidence 
in  an  iniquitous  and  unlawful  information.^^ 

"  Lamh  v.  Evans,  3  Ch.  462-1892;  "  Tode  v.  Gross,  127  N.  Y.  480-1891 ; 

affirmed  in  1  Ch.  218-1893;  62  L.  J.      28  N.  E.  469;  13  L.  R.  A.  652,  note. 
Ch.  404.  "  Garlside  v.  Outram,  3  Jr.  N.  S. 


Injury  to  Plaintiff  by  Defendant's  Disclosures    313 

§  153.  Danger  of  Injury  to  Plaintiff  by  Defendant's  Dis- 
closures Must  Exist.  —  In  order  to  obtain  an  injunction  it  should 
appear  that  the  plaintiff  is  in  a  position  where  he  is  exposed  to 
danger  of  loss  by  defendant's  acts  or  threatened  acts.^^ 

But  in  the  absence  of  proof  of  actual  misuse  of  secrets,  there 
must  at  least  be  some  evidence  of  wrongful  intent,  or  other  suffi- 
cient reason  for  apprehending  injury  through  violation  of  con- 
fidence. 

The  mere  fact  that  a  competitor  has  employed  one's  former 
employee,  acquainted  with  one's  trade  secrets,  does  not  entitle 
one  to  an  injunction  against  the  learning  and  using  of  such  secrets; 
no  such  facts  being  shown  as  to  warrant  the  inference  of  a  fraud- 
ulent or  ulterior  purpose,  in  the  hiring. 

In  H.  B.  Wiggins  Sons  Co.  v.  Cott-A-Lap  Co.,''''  Piatt,  J., 
said  with  reference  to  the  state  of  facts  above  indicated:  "If 
the  injunction  issues,  it  means  that  hereafter  no  man  can 
work  for  one  and  learn  his  business  secrets,  and  after  leaving 
that  employment  engage  himself  to  a  rival  in  business,  without 
carrying  on  his  back  into  that  business  the  injunctive  mandate 
of  a  court  of  equity.  There  is  nothing  whatever  in  the  facts 
of  this  case,  except  opportunity  to  do  wrong  and  a  suspicion  in 
the  mind  of  the  rival  that  wrong  will  be  done.  The  remedy 
asked  for  is  an  extraordinary  one,  and  should  not  be  lightly  in- 
dulged in."  57     *     *     * 

39-1856.  Defendant  was  a  former  extended  to  cases  where  fraudulent 
employee  of  plaintiffs,  a  firm  of  brok-  transactions  have  come  to  the  knowl- 
ers,  and  during  his  employment  had  edge  of  the  person  confidentially  em- 
acquired  information  showing  fraud-  ployed.  There  can  be  no  confidence 
ulent  conduct  on  the  part  of  the  firm  in  an  iniquitous  secret, 
to  the  injury  of  persons  dealing  with  ^^  Shonk  Tin  Printing  Co.  v.  Shonk, 
them.  Upon  his  evidence  one  person  138  III.  34-1891;  27  N.  E.  529.  The 
so  injured  had  recovered  substantial  appellant  had  gone  out  of  business 
damages  before  an  arbitrator.  The  and  appellee  was  its  successor.  Held, 
firm  then  sued  to  restrain  him  from  that  as  it  did  not  appear  that  at  the 
making  further  disclosures,  on  the  time  the  bill  was  filed  the  appellant 
ground  that  his  information  had  been  was  in  a  position  where  it  could  have 
acquired  while  he  occupied  a  con-  been  injured  by  the  acts  of  appellee 
fidential  relation  to  them.  Held,  that  complained  of,  and  this  is  an  indis- 
the  protection  to  which  one  is  or-  pensable  element  of  this  action,  no 
dinarily  entitled  as  against  any  person  injunction  would  issue, 
whom  he  has  employed  in  a  confiden-  ^"^  169  Fed.  150  (1909). 
tial  way  in  his  affairs  is  not  to  be          "  To  similar  effect  as  the  last  cited 


314  Trade  Secrets 

§  154.  One  Who  Avails  Himself  of  a  Secret  Fraudulently 
Disclosed  May  be  Enjoined  and  Held  Accountable  for  Profits.  — 

A  secret  need  not  be  one  rohiting  to  methods  of  manufacture  » 
or  process  to  receive  the  protection  of  the  court,  but  may  be  some 
financial  or  commercial  information,  or  the  fact  that  some  cus- 
tomer is  about  to  place  an  order.  If  an  employee  or  agent  leaves 
liis  employer  or  is  discharged  knowing  such  information,  and  he 
imparts  it  to  a  rival  to  the  damage  of  his  former  employer,  the 
second  employer  will  be  enjoined  from  using  the  information, 
and  may  be  compelled  to  account  for  any  profits  made  from  use 
of  this  information. 

One  Hayes,  an  employee  of  complainant's  predecessor,  briefly 
tenned  the  ''New  Haven  Company,"  had  nearly  completed 
negotiations  with  a  Boston  company  for  placing  an  order  with 
the  New  Haven  Company,  when  the  latter  turned  over  all  its 
business  to  complainant,  which  did  not  take  Hayes  into  its  em- 
ploy. Hayes  then  availing  hunself  of  infonnation  obtained  and 
relations  established  with  the  customer  while  in  the  employ  of 
the  New  Haven  Company,  succeeded  in  directing  the  contract 
to  the  defendant  company.  Held,  that  this  company  was  liable 
to  account  to  complainant  for  the  profits  made  on  this  contract.*'^ 

§  155.  Name  of  a  Jobber  from  Whom  Goods  are  Bought 
may  be  a  Trade  Secret.  —  The  court,  on  appHcation  of  a  manu- 
facturer, will  not  compel  a  retailer  to  give  information  as  to 
who  was  the  jobber  who  sold  certain  goods  made  by  this 
manufacturer  to  the  retailer.  This  fact  is  held  to  be  a  trade 
secret. 

A  dry  goods  store  was  asked  who  sold  the  goods  of  plaintiff 
to  them,  and  on  their  dechning  to  answer  the  court  upheld  them, 
saying  that  fact  was  a  trade  secret  not  essential  to  maintenance 
of  the  plaintiff's  suit.     "When  a  manufacturer  parts  with  his 

case,  see  S.  S.  While  D.  M.  Co.  v.  Misc.  386;  S3  Hun,  43.  But  such  prof- 
Mitchell,  188  Fed.  1017  (injunction  its  are  only  awarded  for  the  period 
asked  against  former  employee).  during  which  a  defendant  knowingly 
^*  International  Register  Co.  v.  Re-  infringed  complainant's  rights.  Vul- 
cording  Fare  Register  Co.,  151  Fed.  can  D.  Co.  v.  American  Can  Co.,  75 
199-1907(C.C.  A.  2dC^ir.).  Account-  N.  J.  Eq.  542.  A  court  of  equity  can- 
ing for  profits  was  directed  in  Vulcan  not  award  exemplary  damages.  Wit- 
Detinning  Co.  v.  American  Can  Co.,  75  kop  &  Holmes  Co.  v.  Great  A.  &  P. 
N.  J.  Eq.  542;  s.  c.  80  N.  J.  Eq.  443;  Tea  Co.,  69  Misc.  90. 
also  in  Baldwin  v.  Von  Micheroux,  5 


Transfer  of  Secrets  315 

goods  and  they  go  upon  the  market,  any  third  person  has  the 
right  to  purchase  and  sell  them  as  he  pleases  without  the  consent 
of  the  manufacturer,  and  the  courts  will  not  aid  the  manufac- 
turer; under  the  guise  of  protecting  his  trade-mark  or  the  sup- 
pression of  unfair  competition,  by  permitting  him  in  such 
litigation  to  discover  the  source  from  which  an  objectionable 
merchant  to  him  obtains  his  supply."  ^^ 

In  connection  with  this  ruUng,  that  of  the  New  Jersey  Chan- 
cery Court  should  be  noticed,  when,  in  Salomon  v.  Hertz,^^  it 
was  held  that  employees  should  not  be  restrained  after  their 
employment  was  ended  from  disclosing  where  plaintiff  purchased 
his  materials  or  to  whom  he  sold  his  goods  or  the  prices  at  which 
he  bought  and  sold. 

A  plea  by  the  defendant  that  he  uses  no  secret  in  his  business 
or  has  possession  of  no  secret,  such  as  the  plaintiff  alleges  he 
has,  will  not  be  sufficient  to  prevent  the  issuing  of  the  injunction. 

§  156.  Transfer  of  Secrets.  —  As  early  as  1823  trade  secrets 
were  objects  of  transfer  by  sale,  assignments  and  bequests,  and 
the  right  of  the  true  owner  of  a  secret  to  hold  to  account  one 
who  wrongfully  obtains  possession  of  it  was  upheld.^^ 

A  secret  may  be  transferred  by  gift.  In  Covell  v.  Chadwick,  ^^ 
an  administratrix  transferred  a  formula  and  trade-marks  by  a 
gift.  The  donee  of  the  administratrix  thereupon  made  the  medi- 
cine. The  plaintiff,  a  grantee  of  an  administrator  de  bonis  non,  who 
followed  the  administratrix,  attempted  in  this  action  to  prevent 
the  donee  from  using  the  formula.    Held,  the  donee  had  good  title. 

Where  one  has  sold  for  a  valuable  consideration  the  exclusive 
property  in  a  secret  medicine,  he  has  no  right  to  reveal  the  secret 
to  another,  and  an  injunction  will  issue  against  the  use  of  such, 
a  secret  by  one  to  whom  it  has  been  revealed  either  by  the  vendor 

59  Gorham  v.   Emery,   etc.,   Co.,   92  mother   destroyed   the  formula,   but 

Fed.  774  at  p.  779.  verbally  communicated  its  contents  to 

80  40  N.  J.  Eq.  400-1885;  2  Atl.  her  eldest  son,  for  the  benefit  of  the 
379.                    .  brothers     and     sisters.       Upon    suit 

81  Green  v,  Folgham,  1  Sim.  &  St,  brought  against  him  by  some  of  the 
398-1823.  The  owner  of  a  secret  latter,  he  was  declared  to  hold  the 
formula  for  making  an  ointment,  as-  secret  upon  the  trust  of  the  settle- 
signed  it,  on  her  marriage,  to  trus-  ment,  and  was  directed  to  account  for 
tees,  in  trust  for  her  and  her  hus-  the  profits  since  his  mother's  death, 
band  for  their  lives,  then  to  be  sold  ^^  153  Mass.  263-1891;  26  N.  E. 
for  the  benefit  of  their  children.    The  856. 


316  Trade  Secrets 

himself  or  by  the  member  of  the  family  or  other  person  who  is 
in  possession  of  it  through  confidential  relations  with  the  vendor.*^ 
Whether  nominated  in  the  agreement  of  the  transfer  or  not,  the 
vendor  of  a  secret  will  not  be  allowed  to  impart  the  secret  to  a 
third  person  after  the  transfer.  The  law  holds  the  right  con- 
veyed to  be  exclusive  even  of  the  vendor  himself,  and  an  injunc- 
tion will  issue  against  the  vendor,  or  any  one  of  his  family  or 
associates  who  learn  the  secret  through  their  relations  with  him, 
forbidding  them  to  disclose  it. 

The  devolution  of  the  right  to  use  a  trade  secret  in  case  of  the 
dissolution  of  partnership  or  corporation,  or  of  bankruptcy,  etc., 
is  doubtless  subject  to  similar  rules  as  those  applying  to  other 
hi  tangible  assets,  such  as  trade-marks,  etc.*^^ 

The  assignment  of  a  trade  secret  carries  the  right  to  protect 
it,  by  preventing  disclosure  or  unauthorized  use  on  the  part  of 
those  who  have  held  confidential  relations  with  the  assignor, 
though  they  may  never  have  had  any  connection  with  the  as- 
signee. This  because  title  to  a  trade  secret,  though  dishonestly 
obtained,  is  good  against  everyone  except  the  person  from  whom 
the  secret  had  been  so  obtained  and  his  assigns. ''■'• 

§  157.  List  of  Customers  is  Secret  Property  —  No  One  May 
Canvass  Them  Except  the  Owner  of  the  List.  —  The  question 
whether  a  person  who  had  sold  the  good-will  of  his  business 
was  entitled  afterward  to  canvass  the  customers  of  that  busi- 
ness came  first  before  the  courts  for  decision  in  the  case  of  La- 
bouchere  v.  Dawson,^  and  Lord  Romilly,  M.  R.,  answered  in  the 
negative.  He  was  of  opinion  that  the  principles  of  equity  must  pre- 
vail and  that  persons  are  not  at  hberty  to  depreciate  the  value  of 
the  thing  which  they  have  sold.  He  considered  that  the  defendant 
was  not  entitled,  personally  or  by  letter,  or  by  his  agent  or  traveler, 
to  go  to  anyone  who  was  a  customer  of  the  firm  and  to  solicit 
him  not  to  continue  business  with  the  old  finn,  but  to  transfer  it 
to  him;  that  this  was  not  a  fair  and  reasonable  thing  to  do  after 

«'  C.  F.  Simmons  Medicine  Co.  v.  absence  of  any  express  agreement,  at 

Simmons,   81   Fed.    1G3   (C.   C.   Ark.  liberty  to  use  its  trade  secrets. 

1897).  85  Vulcan  Detinning  Co.  v.  Ameri- 

'*  It  was,  however,  said  in  Baldwin  can  Can  Co.,  67  N.  J.  Eq.  243-1904; 

V.   Von  Micheroux,  5  Misc.   (N.  Y.)  58  Atl.  290. 

386;  83  Hun,  43,  that  on  the  dissolu-  «« 13  Eq.  322-1872. 
tion  of  a  firm  each  member  was,  in  the 


List  of  Customers  Is  Secret  Property  317 

he  had  sold  the  good-will.  Accordingly  an  injunction  was  granted 
'Ho  restrain  the  defendant,  his  partners,  servants,  or  agents  from 
appl^ang  to  any  person  who  was  a  customer  of  the  firm  prior  to 
the  date  of  the  sale,  privately,  by  letter,  personally,  or  by  a 
traveler,  asking  such  customers  to  continue  to  deal  with  the 
defendant  or  not  to  deal  with  the  plaintiffs"  (id.  p.  327).  This 
decision  was  subsequently  followed  by  the  House  of  Lords  in 
Trego  v.  Hunt.^'^ 

Before  1876,  Trego  and  wife  were  in  business  in  Condon.  In 
1876,  Trego  took  Hunt  into  partnership,  agreeing  with  Hunt 
that  the  good-will  should  remain  Trego's  property.  Trego  died, 
business  was  continued  by  his  widow,  under  contract  that  she 
should  be  sole  owner  of  good-will.  In  1894,  Hunt  employed 
a  clerk  out  of  hours  to  make  a  copy  of  the  concern's  customers. 
Injunction  granted.  The  same  view  obtains  in  New  York,^^" 
Massachusetts,^^''  New  Jersey,^^'^  Michigan,^^^  Rhode  Island,''^'  Illi- 
nois ^^  ^  and  Pennsylvania  *'^^  as  to  the  right  of  a  voluntary  assignor 
of  the  good-will  of  a  business  to  solicit  business  from  old  custom- 
ers. In  Connecticut^^''  the  court  of  last  resort  has  entertained 
a  contrary  view. 

A  manager  of  a  game  farm  surreptitiously  copied  from  his 
master's  order  book  a  list  of  names  and  addresses  of  the  cus- 
tomers, with  the  intention  of  using  it  for  the  purpose  of  solicit- 
ing orders  from  them  after  he  had  left  the  plaintiff's  employ, 
and  set  up  a  similar  business  of  his  own.  He  then  left  the  plain- 
tiff's employ  and  sent  out  circulars  to  the  customers  in  the  list, 
soliciting  their  trade  for  himself.  Held,  that  in  such  a  contract 
of  service  there  is  an  imphed  stipulation  that  the  servant  will 
act  with  good  faith  toward  his  master,  and  that  defendant's 
conduct  was  a  breach  of  that  obligation.  The  court  granted  an 
injunction  against  the  use  of  information  derived  from  the  list, 
awarded  damages  and  directed  that  the  list  be  delivered  to  plain- 

"  Trego  v.  Hunt,  1896,  App.   Cas.  ^'^  Mijers  v.  Kalamazoo  Buggy  Co., 

7.  54  Mich.  215. 

"•^  Von    Breman    v.    MacMonines,  *''''  Zanturjian    v.     Boornazian,     25 

200  N.  Y.  41.  R.  I.  151. 

^■'^  Hutchinson  v.  Nay,    187    Mass.  <^^^  Rajift  v.  Reimers,  200  111.  386. 

262.  "i;  Wentzcl  v.  Barbin,  189   Pa.  St. 

87^=  Newark  Coal  Co.  v.  Spangler,  54  502. 
N.  J.  Equity,  354.  <"''  Cotlrell  v.  Babcock  P.  P.  M.  Co., 

54  Conn.  122. 


318  Trade  Secrets 

tiff  to  be  destroy ed.^^  It  is  seen  from  the  foregoing  that  under 
Enghsli  procethirc,  where  an  ex-employee  is  found  to  have  copied 
and  used  a  Hst  of  customers  belonging  to  his  former  employer, 
the  court  has  power  to  enjoin  the  use  of  it,  award  damages,  and 
direct  that  the  Ust  be  delivered  to  the  plaintiff  to  be  destroyed. 
See  §§  28,  150. 

''The  names  of  the  customers  of  a  business  concern  whose 
trade  and  patronage  have  been  secured  by  years  of  business 
effort  and  advertising,  and  the  expenditure  of  time  and  money, 
constituting  a  part  of  the  good-will  of  a  business  which  enterprise 
and  foresight  have  built  up,  should  be  deemed  just  as  sacred  and 
entitled  to  the  same  protection  as  a  secret  of  compounding  some 
article  of  manufacture  and  commerce."  ^^ 

The  fact  that  the  list  was  prepared  by  the  ex-employee  during 
his  previous  employment  will  give  him  no  right  to  use  it  after 
he  leaves  his  employment.^^'' 

It  has  been  held  in  New  York  that  it  is  not  essential  that  writ- 
ten lists  of  customers  should  be  retained  and  used  by  the  former 
employee.  He  is  not  entitled  to  avail  himself  of  his  acquaintance 
with  the  customers  to  canvass  their  trade  for  a  new  employer. 
This  rule  should  be  apphed  with  caution.  Much  depends  on  the 
special  facts  of  the  case,  and  some  courts  seem  disinclined  to  go 
as  far  as  this.^" 

98  Robh  V.  Green,  2  Q.  B.  315-1S95.  prepared   by  a   former   employee   of 

And  see  2  Q.  B.  1.  plaintiff  in  the  course  of  duty,  and  a 

9»  Witkop  V.  Boyce,  61  Misc.  (N.  Y.)  copy  of  them  having  been  taken  by 

126-31,  aft'd  131  App.  Div.  922.  Cited  him  when  he  left  plaintiff's  employ, 

in  Empire  Laundry  v.  Lozier,  165  Cal.  Stevens  &  Co.  v.  Stiles,  29  R.  I.  399 

95-1913.  (1909) ;  (20  L.  R.  A.  N.  S.  933). 

«^  Stevens  v.  Stiles,  29  R.  I.  399-  Defendant  was  employed  by  plain- 

1909.  tiff  in  its  business,  as  opticians,  to 

™  Wilkop  V.  Boyce,  64  Misc.  (N.  Y.)  examine  the  eyes  of  customers,  pre- 

374-1909.     See  also  Witkop  v.  Great  scribe  glasses,  and  keep  records  of  his 

Atlantic  &  Pacific  Tea  Co.,  69  Misc.  examination  and  prescription.     Held, 

(N.    Y.)    90;   Oxypathor  Co.  v.   De  that  he  had  no  right  to  copy  such 

Cordcro,  164  App.  Div.  962;  149  N.  Y.  notes,  even  so  far  as  they  related  to 

Supp.  513.  examinations  made  by  him,  and  after 

An  injunction  was  granted  against  leaving  his  employ,  to  send  circular 

the  use  by  a  rival  of  card  indices  letters  soUciting  the  custom  of  those 

giving  information  as  to  agents,  con-  whose  names  and  addresses  he  had 

tracts,  and  other  details  of  plaintiff's  recorded  by  this  means.     Injunction  \ 

business,    these   indices   having   been  granted. 


Pleadings  and  Practice;  Form  of  Injunction       319 

But  in  a  later  New  York  case,  ^^  in  which  tliere  was  no  copying 
of  hsts  of  customers  the  court  said:  "All  that  clearly  appears  is 
that  he  (the  employee)  undertook  to  use  in  his  new  employ- 
ment the  knowledge  he  had  acquired  in  the  old.  This  if  it  in- 
volves no  breach  of  confidence,  is  not  unlawful,  for  equity  has  no 
power  to  compel  a  man  who  changes  employers  to  wipe  clean  the 
slate  of  his  memory."  So  also  in  Boosing  y.  DormanJ^''  a  former 
employee  was  permitted  to  solicit  old  customers,  these  not  being 
only  on  his  employer's  list,  but  publicly  listed  in  trade  directories. 

And  in  Great  Union  Tea  Co.  v.  Dodds,''^''  the  court  declined  to 
restrain  the  mere  soliciting  of  customers  known  to  defendant 
through  his  former  employment.  On  the  other  hand,  Smith 
v.  Kenian,''''  (cited  in  note,  31  L.  R.  A.  N.  S.  260,  261)  and  the 
discussion  in  Robb  v.  Green,'' ^'^  seem  to  support  the  ruling  of  the 
New  York  case  first  mentioned.  Such  a  case  as  Stein  v.  National 
Life  Association,''^''  seems  distinguishable.  There  the  court  re- 
fused to  restrain  a  life  insurance  agent  who  had  made  a  new 
connection  from  influencing  policy-holders  whom  he  had  se- 
cured for  the  old  company  from  transferring  their  insurance 
to  the  new  company;  the  agent  had  ''relied  upon  no  informa- 
tion which  had  been  communicated  to  him  in  confidence,  as  a 
business  or  trade  secret." 

An  unusually  vigorous  injunction  was  granted  in  Loven  v. 
The  People, '''^^  where  a  former  employee,  using  confidential 
data  regarding  customers,  was  endeavoring  by  solicitation  to 
divert  their  trade.  His  conduct  was  in  violation  of  an  ex- 
press agreement.  The  injunction  forbade  his  corresponding 
in  any  name  with  complainants'  customers,  as  well  as  from 
soliciting  them,  and  was  continued,  in  a  contempt  proceed- 
ing, not  only  to  prohibit  him  from  initiating  correspondence 
with  them,  but  even  from  responding  to  their  inquiries. 

§  158.  Pleadings  and  Practice ;  Form  of  Injunction.  —  Neither 
the  bill  nor  the  injunction  need  specify  in  detail  the  particular 
secrets  the  disclosure  of  which  is  threatened.^^ 

(English  and  American  cases  cited  ''^'^  8  Oliio  Dec.  Repr.  32  (cited  in 

and  quoted).  note  31  L.  R.  A.  N.  S.  260,  261. 

■'^Peerless  Pattern  Co.  v.  Pictorial  ^^^^  64  L.  J.  Q.  B.  N.  S.  593. 

Review  Co.,  147  App.  Div.  (N.  Y.)  715-  "« 105  Ga.  821-1899. 

1911.  ''-^158  111.  159-1895. 

''"  148  App.  Div.  (N.  Y.)  824.  "  S.  S.  White  D.  M.  Co.  v.  Mitchell, 

"^  164  Mich.  50-1910.  188  Fed.   1017  (injunction  need  not 


320  Trade  Secrets 

But  it  has  been  held  that  an  injunction  should  specify  the  par- 
ticular i:)rei)arations  as  to  which  it  forbids  the  disclosure  and  use  of 
secret  formulas." 

The  remedies  apphcable  to  trade-mark,  copyright  and  patent 
cases  are  said  to  be  applicable  to  equitable  suits  to  protect  trade 
secrets/'' 

§  159.  Defenses.  —  That  the  employer  is  in  actual  possession 
of  the  secret  and  using  it  is  ordinarily  enough  to  entitle  it  to  pro- 
tection against  an  employee  using  it  improperly,  and  he  cannot 
set  up,  under  the  doctrine  of  "clean  hands,"  that  the  secret  had 
been  obtained  by  unfaii"  means  from  a  third  person.  This  is  so 
at  least  where  the  employer  was  not  personally  at  fault ;  the  fraud 
of  an  agent  will  not  be  imputed  to  him.^'' 

So  it  was  held  not  to  be  sufficient  to  call  for  the  application  of 
the  ''clean  hands"  doctrine  that  complainant  had  to  some  extent 
offended  against  another  by  copying  his  catalogues,  where  not 
only  this  but  various  other  disloj^al  acts  were  charged  against 
defendant."*^  Nor  is  it  a  defense  that  the  manufacture  of  the 
article  in  question  by  the  plaintiff  corporation  was  ultra  vires.'''' 

In  Philadelphia  Extracting  Co.  v.  Keystone  Extracting  Co.,''''  it 
was  intunated  that  laches  would  not  bar  injunctive  relief  against 
one  who  has  violated  the  confidence  reposed  in  him  as  an  employee. 

§  160.  Duty  of  Corporate  Officers  as  to  Trade  Secrets. — 
A  director  of  a  corporation  who  obtains  knowledge  of  confidential 
trade  infonnation  while  in  performance  of  his  duty  may  not 
use  such  information  later  in  a  rival  concern. ^^     ''In  the  applica- 

be  more  definite  than  the  threatened  Co.   v.    De   Cordero,    164   App.    Div. 

injurj')-       Vulcan    Detinning    Co.    v.  962. 

American  Can  Co.,  67  N.  J.  Eq.  243  '*  Vulcan  Detinning  Co.  v.  American 

(secrets  need  not  be  specifically  enu-  Can  Co.,  69  Atl.  1103,  1106  (N.  J.  Eq. 

merated;  general  description  enough).  1908). 

Pomeroy  Ink  Co.  v.  Pomeroy,  77  N.  J.  "  Vulcan  Detinning  Co.  v.  American 

Eq.  293,  299-1910.  Can  Co.,  67  N.  J.  Eq.  243-190.5;  s.  c. 

"  G.  F.  Harvey  Co.  v.  NaVl  Drug  72  N.  J.  Eq.  387. 

Co.,  75  App.  Div.  103  (where  the  evi-  '">  Merchants  S.  C.  Co.  v.  Retailers' 

dence  related  only  to  a  particular  rem-  Co.,  206  Fed.  545. 

edy,  which  was  covered   by  the  in-  "  S.  S.  White  D.  M.  Co.  v.  Mitchell, 

junction,  it  was  too  sweeping  to  make  188  Fed.  1017-1911. 

the  injunction  extend  to  "any"  prepa-  "^176   Fed.   830-1910. 

ration  made  in  accordance  with  "any  "  "  Vulcan  Co.  v.  American  Can  Co., 

secret  formula).     8ce  also  Oxypathor  72  N.  J.  Eq.  387;  67  Atl.  339-1907. 


Letters  May  Be  Trade  Secrets  321 

tion  of  these  general  principles  the  secrecy  with  which  a  court  of 
equity  deals  is  not  necessarily  that  absolute  secrecy  that  inheres 
in  discovery  but  that  qualified  secrecy  that  arises  from  mutual 
understanding  and  that  is  required  alike  by  good  faith  and  by 
good  morals."     (Id.) 

A  secretary  of  a  corporation  has  been  upheld  in  forcibly  tak- 
ing the  files  of  a  corporation  from  a  director  who  was  using  them 
for  the  benefit  of  a  rival  company .^'^ 

§  161.  Letters  May  be  Trade  Secrets.  —  After  dissolution  of  a 
partnership,  equity  will  restrain  one  partner  from  pubhshing 
letters  of  another  partner  concerning  the  business  of  the  firm, 
unless  the  purpose  of  justice,  civil  or  criminal,  require  such  pub- 
lication.^ 

'"  Heminway  v.  Heminway,  58  Conn.  ^°  Roberts  v.   McKee,  29  Ga.    161- 

443-1895.  1859. 


CHAPTER  XII 

Interference  With  a  Competitor's  Business  and  Contracts 

Section  162.  Action  at  common  law  based  only  on  injury  to  one's  trade  or 
business. 

163.  Malice. 

164.  Interference  with  business  generally. 

165.  Interference  with  contracts  by  tliird  person  enjoined. 

166.  Interference  with  contracts  with  servants. 

167.  Lumley  v.  Gye,  and  other  cases. 

168.  Causing  breach  of  contracts  for  furnishing  information. 

169.  Causing   breach   of   passengers'   contracts   with   transportation 

companies. 

170.  What  constitutes  interference  with  contract. 

171.  Justification  of  interference  with  contracts. 

172.  Ignorance  of  the  existence  of  the  contract  is  no  defence  against 

an  injunction. 
172^^.  Procuring  breach  of  contract  not  to  re-enter  business. 

173.  Position  of  New  York  courts. 

174.  Conditional  contracts  —  inducing  brcacli  of  manufacturers'  con- 

tracts with  retailers. 

175.  Inducing  breach  of  contracts  for  sale  of  goods  made  by  secret 

process. 

176.  Interference  with  proposed  or  prospective  contracts. 

177.  What  interference  with  another's  business  in  general  is  legitimate. 

178.  Tortious  interference  with  another's  business  generally. 

179.  Interference  with  salesmen  of  a  competitor. 
ISO.  Interference  by  false  representations  and  threats. 

181.  Interference  by  bringing  a  multiplicity  of  suits. 

182.  Simulated  competition. 

183.  Interference  with  employment,  actual  or  prospective. 

184.  Damages. 

It  has  long  been  a  recognized  principle  of  common  law  that 
the  prevention  and  curbing  of  competition  is  an  unlawful  act. 
The  restriction  of  the  freedom  of  trade  is  considered  to  be  against 
public  policy,  and  injurious  to  general  welfare.^  During  the  past 
few  years  there  has  been  a  growing  demand  made  on  courts  and 
legislatures  that  they  take  measures  to  limit  the  freedom  of  com- 
petition of  the  so-called  trusts  and  also  that  they  take  other 
measures  to  give  the  small  dealer  larger  protection  and  freedom 
1  People  v.  Sheldon,  139  N.  Y.  251. 
322 


Action  Based  Only  on  Injury  to  One's  Trade      323 

in  competition.  All  these  demands  are  made  for  the  benefit  of 
those  who  are  not  able  to  cope  with  the  great  powers  of  the  com- 
mercial world  that  have  come  into  existence  under  the  law  as  it 
now  exists.  These  demands  are  socialistic  in  their  nature.  Free- 
dom of  competition,  under  modern  conditions, ^  seems  to  lead  to 
monopoly,  —  the  very  evil  which  the  common  law  sought  to 
avoid  in  its  protection  of  competition.  This  condition  has  been 
reached,  in  part,  by  the  application  of  the  very  rules  laid  down  by 
the  common  law  to  prevent  monopoly. 

The  discussion  of  these  questions  by  the  courts  is  to  be  found 
largely  in  cases  dealing  (a)  with  the  right  which  it  is  claimed 
every  man  has  to  carry  on  his  trade  or  calling  without  molestation 
or  interruption,  —  cases  dealing  principally  with  rights  of  labor 
organizations  as  to  boycott,  strikes,  lockouts,  etc.;  (6)  with  the 
right  of  persons  under  contract  with  each  other  as  against  one 
who  intentionally  causes  a  breach  of  that  contract.  Cases  of 
this  sort  are  not  usually  classed  as  unfair  competition  cases,  but 
the  principles  involved  in  them  go  straight  to  the  question  of 
fairness  and  honesty  in  business  competition.  If  the  limits  to 
the  right  of  one  merchant  to  interfere  with,  to  block,  harass,  and 
injure  the  trade  of  a  competitor  are  not  defined  clearly,  it  means 
that  the  freedom  of  use  of  capital  in  commercial  enterprises  will 
be  hampered  and  restricted  unnecessarily.  If  the  business  world 
is  not  certain  of  its  rights  as  against  those  who  intentionally  and 
wrongfully  procure  the  breaking  of  contracts  for  their  own  gain, 
public  confidence  in  the  binding  force  of  contracts  which  is  now 
none  too  strong  will  be  weakened. 

Here  again  the  extension  of  the  application  of  the  writ  of  in- 
junction is  demanded  and  opposed  by  the  contending  forces,  for 
by  far  the  most  effective  weapon  against  him  who  interferes  with 
business  or  sets  out  to  effect  a  breaking  of  contracts  to  which  he 
is  not  a  party,  is  the  quick  relief  afforded  by  this  writ. 

First,  then,  let  us  ask  if  at  common  law  there  existed  a  right 
of  action  on  the  complaint  of  one  who  had  been  or  was  being 
injured  in  his  trade,  business,  or  calling  against  the  one  causing 
the  injury,  simply  because  the  injury  was  to  his  means  of  earning 
his  livelihood. 

§  162.  Action  at  Common  Law  based  Only  on  Injury  to  One's 

^ Mogul  SS.  Co.  V.  McGregor,  23  December,  1906,  "New  National 
Q.   B.   D.   598.     Atlantic   Monthly,      Forces  and  the  Old  Law." 


324    Interfekence  With  a  Competitor's  Business,  Etc. 

Trade  or  Business.^  —  One  of  the  earliest  cases  and  one  on  the 

mteri)retati()n  of  which  much  of  the  discussion  of  this  subject  has 
turned,  is  Keehle  v.  Hickeringill,^  (an  action  upon  the  case)  de- 
cided in  1707  by  Sir  John  Holt,  who  is  known  to  every  lawyer 
through  his  decisions  relating  to  bailments.  The  facts  were  these : 
Plaintiff  owned  a  decoy  pond  and  put  upon  it  decoy-ducks,  nets, 
etc.,  for  taking  fowl.  ''The  defendant,  knowing  which  and  in- 
tending to  danmify  the  plaintiff  in  his  vivary  and  to  fright  and 
drive  away  the  wild  fowl  used  to  resort  thither,  and  deprive  him 
of  his  profit,  did  *  *  *  resort  to  the  head  of  said  pond  and 
vivary,  and  did  discharge  six  guns  laden  with  gunpowder,  and 
with  the  noise  and  stink  of  the  gunpowder  did  drive  away  the 
wild  fowl  then  being  in  the  pond;  and  *  *  *  the  defendant, 
with  design  to  damnify  the  plaintiff,  *  *  *  did  place  himself 
with  a  gun  near  the  vivary  and  there  did  discharge  the  said  gun 
several  times  that  was  then  charged  with  the  gunpowder  against 
the  said  decoy  pond,  whereby  the  wild  fowl  were  frighted  aivay 
and  did  forsake  the  said  pond."    Verdict  for  plaintiff. 

Holt,  J.,  held,  that  (1)  ''Making  a  decoy  is  lawful;  (2)  using 
ground  for  that  purpose  is  profitable  for  plaintiff.  As  to  the  first, 
every  man  that  hath  a  property  may  employ  it  for  his  pleasure 
and  profit  as  for  alluring  and  procuring  decoy  ducks  to  come  to 
his  pond.  To  learn  the  trade  of  seducing  other  ducks  to  come 
there  in  order  to  be  taken  is  not  prohibited  either  by  the  law  of 
the  land  or  the  moral  law.  *  *  *  When  a  man  useth  his  art 
or  his  skill  to  take  them,  to  sell  and  dispose  of  for  his  profit,  this 
is  his  trade;  and  he  that  hinders  another  in  his  trade  or  livelihood 
is  liable  to  an  action  for  so  hindering  him.  *  *  *  Why  other- 
wise are  scandalous  words  spoken  of  a  man  in  his  profession  ac- 
tionable, when  without  his  profession  they  are  not  so?  Though 
they  do  not  effect  any  damage,  yet  they  are  mischievous  in  them- 
selves and  therefore  in  their  own  nature  productive  of  damage; 
and  therefore  an  action  lies  against  him.  Such  are  all  words  that 
are  spoken  of  a  man  to  disparage  him  in  his  trade  that  may  bring 
damage  to  him.  *  *  *  How  much  more  when  the  defendant 
doth  an  actual  and  real  damage  to  another  when  he  is  in  the  very 
act  of  receiving  profit  by  his  employment.     *    *    *    Where  a 

="  This  and  the  succeeding  in  first  fe  v.  Montgomery,  etc.,  Co.,  171  Fed. 
edition    referred    to   in   Citizens  Co.  g  561. 

'■'  11  East,  574,  note. 


Action  Based  Only  on  Injury  to  One's  Trade      325 

violent  or  malicious  act  is  done  to  man's  occupation,  profession, 
or  way  of  getting  a  livelihood,  there  an  action  lies  in  all  cases. 
But  if  a  man  doth  him  damage  by  using  the  same  employment, 
as  if  Mr.  Hickeringill  had  set  up  another  decoy  on  his  own  ground 
near  the  plaintiff's,  and  that  had  spoiled  the  custom  of  the  plain- 
tiff, no  action  would  lie,  because  he  had  as  much  liberty  to  make 
and  use  a  decoy  as  the  plaintiff." 

Whether  or  not  this  case  is  of  sufficient  authority  to  warrant 
saying  that  an  action  did  exist  at  common  law  on  account  of 
injury  to  a  man  in  his  trade  or  calling,  it  must  be  admitted  that 
to-day  there  is  an  increasing  demand  that  the  law  furnish  some 
remedy  against  wrongs  which  deprive  a  man  of  his  trade  and 
its  profits,  and  which  interfere  with  his  business,  where  such 
acts  are  done  unfairly.  Freedom  of  competition,  and  freedom 
of  the  right  to  contract  have  ever  been  stoutly  defended  by  the 
common  law,  and  many  courts  have  turned  to  the  Keeble  case 
as  giving  the  foundation  for  allowing  an  action  which  modern 
conditions  seem  to  render  essential  to  the  administration  of 
justice. 

This  case  was  fully  discussed  in  Allen  v.  Flood,'^  by  the  House 
of  Lords.  Lord  Davey  there  says  (p.  173)  that,  in  every  case 
where  such  an  action  has  been  allowed  in  England,  there  has 
been  ''either  violence  or  the  threat  of  violence,  obstruction  of  the 
highway  or  the  access  to  the  plaintiff's  premises,  nuisance,  or 
other  unlawful  acts  done  to  the  damage  of  the  plaintiff;"  and  he 
continues  to  argue,  as  does  Lord  Herschell,  that  there  can  hardly 
be  such  an  action  because  no  instance  of  it  is  found,  other  than 
Keeble  v.  Hickeringill,^  Carrington  v.  Taylor,^  and  Ibbotson  v. 
Peat.'' 

Lord  Watson  takes  up  the  illustrations  used  by  Sir  John  Holt 
in  that  case,  viz.:  (1)  Scaring  children  on  way  to  school  with 
guns  to  the  loss  of  the  pupils  and  schoolmaster;  (2)  obstruction 
of  one  taking  a  horse  to  market,  to  the  loss  of  the  owner;  (3) 
frightening  away  tenants  at  will;  (4)  beating  a  servant;  and  says 
that,  "apart  from  any  question  of  motive  all  these  cases  involve 
the  use  of  means  in  themselves  illegal  —  obstruction,  coercion 
by  means  of  threats  and  personal  assault.^ "     This  observation, 

*  App.  Cas.  1-1898.  ^  3  H.  &  C.  644. 

<*  11  East,  574;  Holt,  14.  « Allen  v.  Flood,  App.  Cas.  1,  102- 

6 11  East,  571.  1898. 


32G    Interference  With  a  Competitor's  Business,  Etc. 

while  based  somewhat  on  assumption,  does  not  seem  to  nullify  the 
authority  of  the  Keeble  case  itself,  in  which  there  was  no  illegal 
or  violent  act,  and  these  conclusions  are  exactly  contrary  to  those 
of  Lord  Halsbury.^ 

Lord  Herschell  contends  that  the  fact  that  the  plaintiff  traded 
in  ducks  —  made  duck  decoying  his  business  —  did  not  change 
the  right  of  the  defendant  to  shoot  on  his  own  land.^'^  He  declines 
to  entertain  any  distinction  between  an  injury  inflicted  upon  a 
man's  trade  and  injuries  of  other  sorts.  He  admits  everyone  has 
a  right  to  pursue  his  trade  or  calling  without  molestation,  but 
only  as  a  part  of  the  larger  principle  that  all  may  do  lawful  acts 
without  molestation.  He  considers  the  statement  in  the  Mogul 
Steamship  Company  case,  to  the  effect  that  ''intentionally  to  do 
that  which  is  calculated  in  the  ordinary  course  of  events  to  dam- 
age, and  which  does  in  fact  damage  another  in  that  other  person's 
property  or  trade  is  actionable,  if  done  without  just  cause  or 
excuse,"  is  dictum,  and  too  broad  a  statement.  But  in  South 
Wales  Miners'  Fed.  v.  Glamorgan  Coal  Co.^^  Lord  James  cites 
this  very  passage  as  a  foundation  principle  of  law. 

Lord  Chancellor  Halsbury  sums  up  his  view  thus:  "I  have 
never  heard  that  a  man  who  was  dismissed  from  his  service  by 
reason  of  some  slander,  could  not  maintain  an  action  against 
the  slanderer  because  the  master  had  a  legal  right  to  discharge 
him."i2  Again  he  said  (p.  78):  ''I  do  not  think  that  the  case  of 
Keeble  v.  Hickeringill  ^^  stands  alone,  though  if  it  did,  considering 
who  decided  it  and  that  certainly  in  later  years  it  has  been  much 
quoted  and  commented  on  and  never  until  now,  so  far  as  I  am 
aware,  criticised  or  questioned,  I  should  be  quite  content  to  rely 
upon  the  authority  of  so  profound  a  lawyer  as  Sir  John  Holt,  and 
such  an  expositor  as  he  was  of  the  spirit  of  freedom  which  runs 
through  the  English  law."  Lord  Halsbury  rests  his  decision  in 
part  on  IValker  v.  Cronin,^"^  which  decision  is  based  on  (1)  Comyn 
Dig.,  where,  under  the  title  "Action  upon  the  case,"  it  is  stated: 
"  In  all  cases,  where  a  man  has  a  temporal  loss,  or  damage  by  the 
wrong  of  another,  he  may  have  an  action  on  the  case  to  be  repaired 

^  Allen  V.  Flood,  App.  Cas.  1,  70-  "App.  Cas.  239-1905,  "The  Stop 
1898.  Day  Case." 

'''Allen  V.  Flood,  App.  Cas.  133-  »M«e?i  v.  f/oorf,  App.  Cas.  74-1898. 
1898.  'Ul  East,  574,  note. 

"  107  Mass.  555. 


Action  Based  Only  on  Injury  to  One's  Trade      327 

in  damages;"  and  on  (2)  the  following  cases:  Keeble  v.  Hickerin- 
gill,^'^  Tarleton  v.  McGawley,^^  Green  v.  Button,^''  Gunter  v.  Astor,^^ 
Hart  V.  Aldridge,^^  Shepherd  v.  Wakeman,^^  Winsmore  v.  Green- 
bank,^^  Lumley  v.  Gye;"  2-  and  in  part  on  Benton  v.  Pratt,"^^  Rice  v. 
Manley,^*  Bixby  v.  Dunlap,"^^  Angle  v.  Chicago,  etc.,  Railway^^ 
The  facts  of  most  of  these  cases  will  be  found  in  this  volume. 

A  case  very  similar  to  the  Keeble  case  has  arisen  in  France. 
The  plaintiff  invited  friends  to  his  estate  to  shoot.  A  jealous 
neighbor  ordered  his  servants  to  make  a  noise  on  his  own  land 
to  frighten  away  the  game  from  the  plaintiff's  land.  He  was 
made  to  pay  damages  to  the  plaintiff.  ^^^ 

We  will  now  turn  to  the  case  of  Allen  v.  Flood, "^"^  from  which 
the  foregoing  opinions  are  taken,  and  which  is  probably  the 
most  exhaustive  judicial  discussion  of  this  question.  Briefly 
stated,  that  case  was  an  action  by  a  discharged  workman  against 
a  delegate  of  a  union  to  which  he  did  not  belong,  on  the  ground 
that  the  delegate  caused  his  employer  to  discharge  him.^^  Twenty- 
one  judges  heard  the  case  in  all  its  stages.  Thirteen,  of  whom 
three  were  Law  Lords,  held  that  the  case  presented  a  good  cause 
of  action.  Eight,  six  of  whom  were  Law  Lords,  denied  the  exist- 
ence of  an  actionable  wrong.  Since  it  was  decided,  the  House  of 
Lords  itself  and  other  English  courts  have  been  astute  to  modify 
and  explain  it,  so  that  its  authority  is  now  confined  to  narrow 
limits.  Lord  Halsbury,  in  Quinn  v.  Leathem,^^  says  that  "the 
hypothesis  of  fact  upon  which  Allen  v.  Flood  was  decided  by  a 
majority  in  this  House  was  that  the  defendant  there  neither 
uttered  nor  carried  into  effect  any  threat  at  all.  He  simply  warned 
others  against  certain  acts."  Lord  MacNaghten  says  in  the  same 
case,  "an  act  which  does  not  amount  to  a  legal  injury  cannot  be 
actionable  because  it  is  done  with  a  bad  intent.  That,  in  my 
opinion,  is  the  sum  and  substance  of  Allen  v.  Flood;"  ^^  and  Lord 

15 11  East,  574,  note.  «  56  N.  H.  456;  22  Am.  Rep.  475. 

»6 1  Peake  N.  P.  C.  205.  ^e  151  u.  S.  1-1893. 

"  2  C.  M.  &  R.  707.  26"  Prince    de    Wagram    v.    Marais 

18  4  J.  B.  Moore,  12-1819.  Cour  de  Paris,  Dec.  2,  1871,  Dalloz, 

"  1  Cowp.  54-1774.  2,  185. 

2°  1  Sid.  79.  "  App.  Cas.  1-1898. 

21  Willes,  577-1745.  =8  gee  on  this  case  valuable  article, 

"2E.  &B.  216.  11  Har.  L.  Rev.  449. 

"  2  Wend.  (N.  Y.)  385-1829.  ''  App.  Cas.  495-506-1901. 

"  66  N.  Y.  82-1876.  '« App.  Cas.  1-1898. 


328    Interference  With  a  Competitor's  Business,  Etc. 

Lindley  says  that  the  case  also  estal^lishes  the  fact  that  Allen 

infringed  no  right  of  the  plaintiffs,  although  he  acted  maliciously. 

The  question  was  later  considered  by  the  House  of  Lords  in  1901, 

when  it  held  that  a  combination  of  two  or  more  persons  without 

excuse  and  without  justification  to  injure  a  man  in  his  trade  by 

persuading  or  inducing  his  customers  not  to  trade  with  him,  or 

/  i  his  servants  or  customers  to  break  contracts  made  with  him,  or 

(/  not  to  deal  with  him,  or  to  leave  his  employ,  is  actionable,  pro- 

I    vided  he  suffers  damages.^' 

In  1905  the  House  held  that  officers  of  a  labor  union  who, 
without  malice  or  ill  will  against  the  employers,  caused  the  mem- 
bers of  the  union  to  stop  work  and  break  their  contract  with  these 
employers,  were  liable,  for  their  act  was  wrongful,  in  the  absence 
of  justification.^^ 

Whether  an  action  existed  at  common  law  based  solely  on 
injury  to  a  man  in  his  trade  or  business,  is  doubtful,  perhaps,  but 
some  jurisdictions,  as  will  be  seen,  have  definitely  recognized 
that  such  a  wrong  is  the  basis  of  an  action  now,  and  practically 
all  courts  grant  rehef  against  acts  which  cause  breach  of  con- 
tracts made  by  others. 

The  Trade  Disputes  Act  of  1906  provides  that  an  act  done 
in  contemplation  or  furtherance  of  a  trade  dispute  shall  not 
be  actionable  as  an  interference  with  contract  or  with  the  trade 
or  business  of  another.  Speaking  of  this  act,  "The  Solicitors' 
Journal"  ^^  says,  p.  156:  "For  general  purposes,  however,  the 
law  as  to  the  liability  of  a  third  party  for  inducing  a.  breach 
of  contract  remains  untouched,  and  with  the  growth  of  modern 
restrictions  on  business,  it  is  probable  that  the  courts  will  have 
abundant  opportunity  of  applying  it."  Mr.  J.  B.  Ames  states 
his  view  of  the  rule  to  be:  "The  wilful  causing  of  damage  to 
another  by  a  positive  act,  whether  by  one  man  alone,  or  by  several 
acting  in  concert,  whether  by  direct  action  against  him  or  in- 
directly by  inducing  a  third  person  to  exercise  a  lawful  right,  is 
a  tort,  unless  there  was  a  just  cause  for  inflicting  the  damage, 
and  the  question  whether  there  was  or  was  not  just  cause  will 

31  Quinn    v.    Leatfiem,    App.    Cas.  '^a  London,  January  4,  1908.     See 

495-1901.  also   Cohen's    "Trade   Union   Law," 

^^  South    Wales    Miners'    Fed.    v.  Lond.  1907. 
Glamorgan,  App.  Cas.  230-H905. 


Malice  329 

depend  in  many  cases,  but  not  in  all,  upon  the  motive  of  the 
actor."  ^^'' 

§  163.  Malice.^2^  —  In  Allen  v.  Flood  ^^  much  space  is  devoted 
to  a  consideration  of  the  meaning  of  the  term  malice,  as  defining 
the  intent  to  injure,  which  the  defendant  has  when  he  commits 
acts  which  result  in  injury  to  the  plaintiff's  trade,  profession,  or 
business;  and  it  is  advisable  to  pause  here  to  consider  this  ques- 
tion, as  the  American  cases,  in  most  instances,  use  the  term  in 
defining  the  action  against  injury  of  this  sort. 

Keeble  v.  Hickeringill  ^'^  is  usually  considered  as  authority  for 
two  propositions:  (a)  that  intentional  injury  to  a  man's  business 
or  trade  is  actionable;  (6)  that  malice  or  intent  to  injure  will  under 
certain  circumstances  cause  an  act,  otherwise  legal,  to  become 
illegal.  So  long  as  Hickeringill  shot  his  gun  on  his  own  land, 
in  good  faith,  no  action  arose  against  him.  Does  the  fact  that  he 
did  this  shooting  with  intent  to  damnify  the  plaintiff  in  his  busi- 
ness, create  an  action  where  none  would  exist  had  the  intent  to 
injure  not  been  shown? 

Malice  does  not  always  create  a  cause  of  action.  It  may  cause 
a  man  to  set  up  a  rival  business  next  door  to  his  enemy,  but  so 
long  as  he  pursues  that  business,  using  only  fair  methods,  al- 
though with  all  possible  malice,  no  action  arises.  A  person  may 
stop  the  percolation  of  water  from  his  land,  when  his  evident 
purpose  is  to  impair  a  city's  water  supply  and  force  a  sale  of 
land,  yet  no  action  arises.^'^  But  any  invasion  of  the  civil  rights 
of  another  person  is  in  itself  a  legal  wrong.  Whether  the  motive 
be  good  or  bad  does  not  alter  this  principle.  Lord  Watson  says, 
in  Allen  v.  Flood, ^^  that  "the  existence  of  a  bad  motive  in  the  case 
of  an  act  which  is  not  in  itself  illegal,  will  not  convert  that  act  into 
a  civil  wrong  for  which  reparation  is  due.  A  wrongful  act  done 
knowingly  and  with  a  view  to  its  injurious  consequences  may, 
in  the  sense  of  law,  be  malicious,  but  such  malice  derives  its 
essential  character  from  the  circumstance  that  the  act  done 
constitutes  a  violation  of  the  law." 

3^  18  Harvard  Law  Rep.  v.  412.  ^m  East,  574,  note.     See  digest 

^-'^  See  Citizens  Co.  v.  Montgomery,  case,  §  162. 
etc.,  Co.,   171   Fed.    561,   where  this         ^^  Chasemore  v.  Richards,  7  H.  L. 

section    in    first   edition   is    referred  C.  349-1859;  Mayor  of  Bradford  v. 

to.  Pickks,  64  L.  J.  Ch.  101-1895. 

"  App.  Cas.  1-1898.  3«  App.  Cas.  92-1898. 


330    Interference  With  a  Competitor's  Business,  Etc. 

In  other  words,  according  to  Lord  Watson,  no  amount  of 
malice  will  make  an  otherwise  unactionable  act,  actionable;  the 
act  which  is  done  with  malice  must  be  illegal  in  itself.  Would 
this  not  eliminate  the  question  of  malice  and  leave  the  question 
thus:  Is  it  actionable  to  injure  another  in  his  business  regardless 
of  malice?  This  seems  begging  the  question.  Is  it  true  that  "mal- 
ice derives  its  essential  character  from  the  circumstance  that  the 
act  done  constitutes  a  violation  of  law?"  Rather,  may  not  the 
malice  often  arise  in  the  defendant's  mind  because  of  something 
totally  unconnected  with  the  act  which  breaches  the  contract  and 
yet  be  the  cause  of  the  act  he  does  in  furtherance  of  his  intent  to 
injure  the  plaintiff?  In  the  Keeble  case  the  act  of  defendant  may 
have  been  prompted  by  the  fact  that  Keeble's  children  had  an- 
noyed his  children,  or  because  he  was  jealous  of  Keeble  on  account 
of  some  political  quarrel.  If  this  be  true  then  the  malice  or  ill 
will  which  prompted  the  injurious  acts  has  nothing  to  do  with 
the  acts  complained  of.  Without  it  they  are  legal;  the  question 
is,  Does  the  presence  of  this  malice  or  ill  will  make  them  illegal? 

Malice  may  mean  many  things;  and  there  are  various  kinds 
of  malice  recognized  in  law.  In  defamation  cases  there  is  implied 
malice,  viz.,  absence  of  just  cause  or  excuse,  and  the  express  or 
actual  malice  which  may  be  proved  after  the  legal  presumption 
of  malice  is  rebutted.  Suffice  it  to  say  that  what  is  meant  by  the 
word,  when  used  in  describing  the  acts  of  those  who  interfere 
with  the  business  of  others,  w^ho  get  trade  away  from  rivals, 
who  force  rivals  to  sell  out,  who  cause  breaches  of  contracts 
in  which  competitors  are  interested,  is  not  the  usual  meaning, 
which  is  "A  disposition  or  intent  to  injure  another  or  others  for 
the  gratification  of  anger,  jealousy,  hatred,  revenge."  ^^  Rather 
these  acts  are  the  result  of  the  desire  of  business  men  to  succeed, 
—  to  down  rivals,  to  get  out  of  their  way  those  who  block  their 
progress.  The  acts  done  for  this  purpose  and  those  done  in  return 
by  those  injured  result  in  ''anger,  jealousy,  hatred,  revenge," 
but  the  real  intent  is  to  succeed  in  business,  to  make  money. 
Lord  Lindley  said  ^^  that  malice  may  or  may  not  be  used  to  denote 
ill  will,  and  that  as  there  are  various  kinds  of  malice,  such  as 
presumptive  or  implied  malice  and  express  malice,  the  term 
should  be  dropped,  and  there  should  be  substituted  for  it  the 

"Standard  Diet.  "^^ South     Wciks    Miners'    Fed.     v. 

Glamorgan,  App.  Cas.  239-1905. 


Malice  331 

meaning  which  is  really  intended  to  be  conveyed  by  that  term, 
as  the  word  is  not  an  apt  one  to  describe  a  mere  ''intention  to 
commit  an  unlawful  act  without  reference  to  spite  or  ill  feeling." 
But  even  this  definition  does  not  seem  to  meet  all  cases,  for  it 
fails  to  include  the  injuries  which  are  suffered  by  reason  of  legal 
acts  done  with  the  intent  to  be  unfair  and  dishonest,  with  the 
express  purpose  of  injuring  another. 

Most  of  the  acts  which  are  claimed  to  be  malicious  and  of  a 
character  to  render  an  act  otherwise  legal  illegal,  are  unscrupu- 
lous, often  dishonest  and  unfair,  but  they  are  not  illegal.  As  an 
abstract,  general  principle,  it  is  always  a  legal  wrong  to  injure 
another  in  any  way;  but,  in  the  development  of  business  and 
civilization,  the  law  has  found  it  necessary  to  legalize  many 
injuries,  or  to  consider  certain  injuries  of  a  character  which  pre- 
vents any  redress  being  awarded  to  the  person  injured.  Such 
injuries  are  permitted  because  of  some  privilege  possessed  by  him 
who  inflicts  them,  which  gives  him  a  right  to  demand  of  the  law 
immunity  from  the  penalty  which  would  otherwise  be  visited 
upon  him.  In  the  adaptation  of  legal  rules  to  modern  conditions 
of  business,  the  problem  of  the  courts  will  be  to  determine  what 
are  the  privileges  of  this  sort,  which  will  justify  the  acts  which 
now  are  considered  by  many  to  be  in  violation  of  individual 
rights.  Lord  Watson  states  that  to  avail  himself  of  such  a  priv- 
ilege, a  man  "shall  act  honestly  *  *  *  and  shall  not  be 
prompted  by  a  desire  to  injure  the  person  who  is  affected  by  his 
act."  ^^  "In  order  to  justify  the  intentional  doing  of  'that  which 
is  calculated  in  the  ordinary  course  of  events  to  damage  and 
which  does  in  fact  damage  another  in  that  other  person's  property 
or  trade,'  you  must  have  some  just  cause  or  excuse."  This  state- 
ment of  Bowen,  L.  J.,  was  approved  as  "exactly  accurate"  by 
Lord  Chancellor  Halsbury.'^" 

"I  was  on  my  own  land,"  says  Hickeringill.  "But  while 
there,"  declared  Keeble,  "you  planned,  intended,  and  committed 
acts  expressly  to  injure  my  business,  to  destroy  my  livelihood 
because  of  malice  you  bore  me.  Your  malice  has  rendered  your 
excuse  of  no  avail.  To  hide  behind  that,  your  act  must  have  been 
done  in  good  faith."  This  motive  of  Hickeringill's,  said  Lord 
Holt,  created  an  actionable  wrong  out  of  an  otherwise  legal  act. 

'^Alle7i  V.  Flood,  App.  Cas.  93-  *<>  Allen  v.  Flood,  App.  Cas.  84- 
1898.  1898. 


332    Interference  With  a  Competttor's  Business,  Etc. 

Justice  Oliver  Wendell  Holmes  has  said  that  "when  a  responsible 
defendant  seeks  to  escape  liability  for  an  act  which  he  had  notice 
was  likely  to  cause  temporal  damage  to  another,  he  must  show 
justification."  ''^  What  constitutes  such  justification  has  not  yet 
been  determined.  The  most  important  justification,  he  says,  is 
privilege;  but  he  is  not  ready  to  admit  that  men  enjoy  such  a 
privilege  to  do  hann,  in  following  their  own  inclination,  or  in  the 
jileasure  of  doing  harm,  to  warrant  a  court  in  overlooking  the 
damage  suffered  at  their  hand  by  others.  Many  elements,  he 
thinks,  may  enter  into  a  decision  as  to  this  question  of  privilege, 
such  as  the  method  of  inducing  the  act,  whether  by  an  act  wrong- 
ful in  itself  or  by  advice  or  combined  action,  and  the  motive 
underlying  the  act  may  be  most  important. 

A  privilege  may  be  forfeited,  and  the  question  is  as  to  the  effect 
on  these  privileges  claimed  by  defendants  in  cases  involving 
injuries  to  business  and  trade,  of  the  fact  that  these  injuries  were 
inflicted  with  the  deliberate  intent  to  injure  the  plaintiff  in  his 
trade  or  livelihood.  Will  proof  of  such  intent  wipe  out  the  privi- 
lege and  compel  the  defendant  to  indemnify  the  plaintiff  for  the 
loss  he  has  inflicted? 

To  define  just  what  acts  will  constitute  privilege  —  justifica- 
tion —  would  be  a  diffisult  task.  Would  it  be  desirable?  One 
of  the  safeguards  of  equity  jurisprudence  is  the  consistent  refusal 
of  equity  courts  to  define  fraud.  Lord  Halsbury  believes  that  a 
definition  of  the  acts  which  may  be  considered  as  privilege,  is 
essential  to  personal  freedom,  but  others  hold  a  contrary  view. 
Undoubtedly  every  man  has  a  right  to  pursue  his  business  free 
from  the  damage,  injury  and  loss  which  are  the  result  of  unfair- 
ness, dishonesty,  misrepresentation,  or  deceit  on  the  part  of 
others  who  shelter  themselves  behind  the  policy  of  laws  that  free- 
dom of  competition  must  be  preserved  at  all  hazards.  In  the  past 
men  have  built  up  their  business  on  the  results  of  the  labor  of 
competitors  which  they  have  seized  upon  by  use  of  methods 
which  whether  legal  or  not  are  not  equitable  or  fair  and  they  have 
been  protected  by  law  to  some  extent  in  so  doing.  Appeal  to  the 
courts  for  relief  against  such  conditions  will  be  continuous  until 
some  modification  of  the  present  rule  is  effected. 

Any  unfair  act  in  trade  has  not  for  its  end  freedom  of  compe- 
tition, but  the  doing  away  with  competition.     But  Mr.  Bigelow 

^'  S  Harv.  L.  Rev.  9. 


Interference  With  Business  Generally  333 

contends,  ^^  that  if  the  defense  of  competition  does  not  extend  to 
cases  where  the  defendant  is  trying  to  ehminate  competition, 
then  freedom  of  contract  does  not  extend  to  cases  of  the  buying 
out  and  absorption  of  rivals,  and  he  beUeves  that  a  Umitation  of 
the  meaning  of  both  these  terms  is  already  in  progress. 

§  164.  Interference  with  Business  Generally.  —  Perhaps  the 
most  advanced  statement  of  authority  as  to  the  legal  effect  of 
inflicting  injury  in  trade  is  the  following:  ''Now,  intentionally 
to  do  that  which  is  calculated  in  the  ordinary  course  of  events  to 
damage,  and  which  does  in  fact  damage  another  in  that  person's 
property  or  trade,  is  actionable  if  done  without  just  cause  or 
excuse."  *^  This  statement  has  been  widely  cited  here  and  in 
England.  Lord  James  considered  it  as  unquestioned  law  in  South 
Wales  Miners'  Fed.  v.  Glamorgan^^  He  also  cited  the  following: 
''Wherever  a  man  does  an  act  which  in  law  and  in  fact  is  a  wrong- 
ful act,  and  such  an  act  as  may,  as  a  natural  and  probable  conse- 
quence of  it,  produce  injury  to  another,  and  which  in  the  particu- 
lar case  does  produce  such  injury,  an  action  on  the  case  will  lie."  ^^ 

The  rule  may  now  be  considered  as  settled,  that  injury  caused 
to  another's  business,  or  legitimate  interests,  even  though  not  by 
means  in  themselves  unlawful,  is  actionable,  unless  justified  by 
legitimate  self-interest. 

In  /.  F.  Parkinson  Co.  v.  Trades  Council,^^  it  was  said:  —  ''Any 
injury  to  a  lawful  business,  whether  the  result  of  conspiracy  or 
not,  is  prima  facie  actionable,  but  may  be  defended  upon  the 
ground  that  it  was  merely  the  result  of  a  lawful  effort  of  the  de- 
fendants to  promote  their  own  welfare.  To  defeat  this  plea  of 
justification,  the  plaintiff  may  offer  evidence  that  the  acts  of  the 
defendants  were  inspired  by  express  malice,  and  were  done  for  the 
purpose  of  injuring  plaintiff  and  not  to  benefit  themselves." 
And  in  a  very  well  considered  recent  case,  Huskie  v.  Grifln,*'^ 
the  New  Hampshire  Court  said:  —  "One  may  not  interfere  with 
his  neighbor's  open  market  or  'reasonable  expectancies'  solely  for 
the  purpose  of  doing  harm.  It  has  been  said,  however,  in  several 
cases  that  a  wrongful  motive  cannot  convert  a  legal  act  into  an 

«  Bigelow  Torts  (8th  ed.),  250.  «  Bowen  v.  Hall,  6  Q.  B.  D.  333; 

^3  Mogul  Steamship  Co.  v.  McGregor,  Smithies  v.  Asso.,  1  K.  B.  310-1909. 

23  Q.  B.  D.  598,  per  Bowen,  L.  J.,  at  «  154  Cal.  581-603  (Dec.  1908). 

613.  «  75  N.  H.  345-1909. 

"  App.  Cas.  239-255-1905. 


334     Interference  with  a  Competitor's  Business,  Etc. 


illegal  one,  and  many  judges  have  thought  this  was  the  end  of 
the  law  upon  the  question.  They  seem  to  proceed  upon  a  theory  of 
absolute  right  in  the  defendant,  which  is  at  variance  with  the  hold- 
ing in  many  of  the  same  cases,  that  the  defendant  may  be  called 
u])on  to  justify  his  conduct.  Indeed,  the  authorities  are  practi- 
cally unanimous  to  the  effect  that  the  defendant  is  liable  unless 
he  shows  a  justification.  If  this  is  true,  it  follows  as  a  matter  of 
course  that  this  right  is  not  absolute.  It  is  a  qualified  one,  and  the 
rightfulness  of  its  exercise  depends  upon  all  those  elements  which 
go  to  make  up  a  cause  for  human  action."  And  quotes  from 
Plant  V.  Woods,  176  Mass.  492,  that  the  justification  of  an  act 
"  may  be  found  sometimes  in  the  circumstances  under  which  it  is 
done,  irrespective  of  motive,  sometimes  in  the  motive  alone,  and 
sometimes  in  the  circumstances  and  motive  combined." ^^ 


^8  "One  may  without  liability  induce 
the  customers  of  another  to  withdraw 
their  custom  from  liim,  in  the  race  of 
competition,  in  order  that  the  former 
may  himself  get  the  custom,  there 
being  no  contract;  and  it  is  no  matter 
that  the  other  party  was  moved 
by  express  intent  to  injure  him, 
motive  being  immaterial  where  the 
act  is  not  unlawful.  But  where  the 
act  is  not  done  under  right  of  com- 
petition, or  under  the  cover  of  friendly, 
neighborly  counsel,  but  wantonly  or 
mahciously  with  intent  to  injure  an- 
other, it  is  actionable,  if  loss  ensue. 
Nor  is  it  material  in  the  latter  case 
that  there  was  no  binding  contract 
between  the  business  man  and  liis 
customers.  He  cannot  interfere,  even 
for  his  own  benefit,  if  there  is  a  con- 
tract." W.  Va.  Transportation  Co. 
V.  Standard  Oil  Co.,  50  W.  Va.  611, 
624.  In  the  recent  case  of  Hutton  v. 
Walters,  132  Tenn.  527  (1915),  the 
court  discussed  the  cases,  and  said: 
"Every  one  has  the  right  to  estabhsh 
and  conduct  a  lawful  business,  and  is 
entitled  to  the  protection  of  organized 
society,  through  its  courts,  when- 
ever that  right  is  unlawfully  invaded. 


Such  right  existing,  the  commission 
of  an  actionable  wrong  is  estabhshed 
against  any  one  who  is  shown  to  have 
intention'aUy  interfered  with  it,  with- 
out justifiable  cause  or  excuse.  To 
estabhsh  justification,  it  must  be  made 
to  appear,  not  only  that  the  act  com- 
plained of  was  otherwise  lawful  and 
performed  in  a  lawful  manner,  but 
hkewise  that  it  had  some  real  tend- 
ency to  effect  a  reasonable  advantage 
to  the  doer  of  it.  But  in  order  to  de- 
termine the  reasonableness  of  such 
act  it  must  be  considered  from  the 
standpoint  of  both  parties,  with  a 
view  to  ascertaining  whether  the  de- 
fendant has  acted  merely  in  the  due 
exercise  of  his  own  right  to  carry  on 
business  for  himself.  If  this  be  found 
in  his  favor,  while  he  may  have  done 
the  plaintiff  harm,  he  cannot  be 
adjudged  to  have  done  an  injury  in 
the  legal  sense;  that  is,  a  ^v^ongful 
act  in  violation  of  the  legal  right  of 
another.  Whether  the  defendant 
was  in  the  reasonable  exercise  of  his 
own  similar  rights  must,  from  the  view- 
point stated,  be  determined  by  the 
court,  or  court  and  jury  in  each  case 
as  it  arises,  on  the  law  and  evidence. 


Interference  with  Business  Generally 


335 


Most  cases  of  this  character,  aside  from  those  involving  in- 
terference with  contract,  as  has  been  said,  have  arisen  over  labor 
difficulties.  They  involve  largely  the  same  fundamental  ques- 
tions as  those  which  arise  from  other  acts  of  competitors  in  trade, 
but  these  labor  cases  are  outside  the  scope  of  this  book.  Many 
recent  cases,  although  arising  out  of  the  acts  of  labor  unions, 
have  involved  the  principle  of  liability  for  interference  with  con- 
tract, as  well  as  the  broader  question  of  interference  with  business, 
as  by  boycotting."*^ 


A  defendant  cannot  excuse  himself  by 
the  mere  fact  that  the  means  used  were 
his  own,  his  property,  his  servants. 
He  cannot,  with  justification  in  law, 
use  his  property,  or  anything  else 
that  appertains  to  him,  in  such  man- 
ner as  to  wantonly  injure  another. 
Still,  it  has  been  decided,  by  the  weight 
of  authority,  that  if  the  act  com- 
plained of,  being  otherwise  lawful  in 
itself,  had  a  reasonable  tendency  to 
promote  endg  advantageous  to  the 
defendant  in  the  conduct  of  his  own 
business,  it  cannot  be  correctly  ad- 
judged an  illegal  agency  or  operation 
by  reason  of  the  fact  that  the  doer  of 
it  was  moved  also  by  a  feeling  of  ill- 
will,  a  personal  malice,  towards  the 
person  against  whom  his  act  was 
directed  (citations) ;  but  if  the  act  is 
otherwise  wrongful,  such  personal  mal- 
ice   may     aggravate    the    damages. 

*  *  *  Of  course  it  is  whoUy 
impossible  to  formulate  a  description 
which  will  cover  all  acts  which  are 
intentionally  hurtful  to  another,  and 
at  the  same  time  justifiable  in  law. 

*  *  *  It  is  left  in  each  case  for 
the  court,  or  the  court  and  jury,  ac- 
cording to  the  way  in  which  the  con- 
troversy is  presented,  to  say  whether 
the  defendant's  conduct  complained 
of  was,  in  view  of  all  the  circumstances, 
a  reasonable  and  proper  exercise  of 
his   right   of   self-protection   or   self- 


advancement,  both  as  to  the  substance 
of  it,  and  the  method  of  it." 

^^  Alfred  W.  Booth  &  Bro.  v.  Bur- 
gess (N.  J.  Eq.  1906),  65  Atl.  226; 
Thacker  Coal  &  Coke  Co.  v.  Burke, 
59  W.  Va.  253-1906;  53  S.  E.  161; 
5  L.  R.  A.  N.  S.   1091;  Flaccus  v. 
Smith,  199  Pa.  St.  128-1901;  48  Atl. 
894;  54  L.  R.  A.  640;  Boysen  v.  Thorn, 
98  Cal.   578-1893;  33  Pac.  492;   21 
L.  R.  A.  233;  May  v.  Wood,  172  Mass. 
11-1898;  51  N.  E.  191;  Glencoe  Land, 
etc.,  Co.  V.  Hudson  Brothers,  etc.,  Co., 
138  Mo.  439-1896;  40  S.  W.  93;  36 
L.  R.  A.  804;  Chambers  &  Marshall, 
V.    Baldwin,    91    Ky.    121-1891;    15 
S.  W.  57;  11  L.  R.  A.  545;  Bourlier 
Brothers  v.   Macaidey,   91   Ky.    135- 
1891;  15  S.  W.  60;  11  L.  R.  A.  550; 
Kline  v.  Euhanks,  109  La.  241-1802; 
33  So.  211;  5.  J.  Wolf  &  Sons  v.  New 
Orleans,  etc.,  Co.,  113  La.  388-1904; 
37  So.  2;  67  L.  R.  A.  65;  McCann  v. 
Wolff,  28  Mo.  App.  447-1888.    Ashley 
v.  Dixon,  48  N.  Y.  430-1872,  is  some- 
times cited  with  the  foregoing  cases; 
but  this  was  a  case  involving  an  ordi- 
nary real  estate  transaction,  and  it  is 
probable  that,  at  least  in  the  normal 
case  of  including  a  breach  of  contract 
to  the  injury  of  a  competitor  in  trade, 
the    prevailing    rule    would    now   be 
applied  in  New  York.    Beattie  v.  Cal- 
lanan,  82  App.  Div.  (N.  Y.)  7-1903; 
81  N.  Y.  Supp.  413;  also,  American 


33()    Interference  with  a  Competitor's  Business,  Etc. 

§  165.  Interference  with  Contracts  by  Third  Person  Enjoined. 
—  Has  a  man  an  absolute  right  to  carry  on  his  trade  or  calling  with- 
out being  molested,  harassed,  or  interfered  with?  He  has  a  right 
to  earn  his  living  in  his  own  way  provided  he  does  not  violate  law 
or  infringe  the  rights  of  others.  Has  he  the  right  to  deal  with  all 
other  persons  who  may  wish  to  deal  with  him?  This  right  is  of 
no  value  if  others  may  not  deal  with  him  freely,  for  interference 
with  their  liberty  affects  him.  "If  such  interference  is  justifiable  in 
point  of  law  he  has  no  redress.  Again,  if  such  interference  is 
wrongful,  the  only  person  who  can  sue  in  respect  of  it  is,  as  a  rule, 
the  person  immediately  affected  by  it.  Another  who  suffers  by 
it  has  no  redress,  the  damage  to  him  is  too  remote,  and  it  would 
be  obviously  practically  impossible  and  highly  inconvenient  to 
give  legal  redress  to  all  who  suffered  from  such  wrongs.  But  if 
the  interference  is  wrongful  and  is  intended  to  damage  a  third 
person,  and  he  is  damaged  in  fact  —  in  other  words,  if  he  is  wrong- 
fully and  intentionally  struck  at  through  others,  and  is  thereby 
damnified  —  the  whole  aspect  of  the  case  is  changed ;  the  wi-ong 
done  to  others  reaches  him,  his  rights  are  infringed,  although 
indirectly,  and  damage  to  him  is  not  too  remote  or  unforeseen, 
but  is  the  direct  consequence  of  what  has  been  done.  Our  law, 
as  I  understand  it,  is  not  so  defective  as  to  refuse  him  a  remedy 
by  an  action  under  such  circumstances."  ^° 

To  the  defense  that  the  act  of  the  defendant  is  too  remote, 
Bigelow  says:  •'^  "Intention  to  have  an  act  done  and  procuring 
it  to  be  done,  though  by  persuading  another  to  do  it,  should 
bring  a  man  near  enough  to  the  act  to  make  him  accountable  for 
it;  successful  endeavor  ought  to  be  enough."  He  adds  (p.  264): 
"Analogy  is  clearly  in  favor  of  treating  persuasion  to  break  a 
contract  as  too  dangerous  to  the  pubhc  welfare  to  be  permitted." 

Law  Book  Co.  v.  The  Edward  Thomp-  or   more   contracting   parties   consti- 

son  Co.,  41  Misc.  (N.  Y.)  396-1903;  tutes  legal  malice  within  the  rule  of 

84  N.  Y.  Supp.  225.    Sec  §  186,  infra.  Angle  v.  Chicago,  St.  Paul,  etc.,  Ry. 

Bitterman  v.   Louisville   &   Nashville  Co.,  151  U.  S.  1-1893;  38  L.  ed.  55; 

Railroad,  207  U.  S.  205-1907,  holds  14  Sup.  Ct.  240. 

that  actual  malice  is  not  a  necessary  s"  Lord  Lindley  in  Quinn  v.  Lealhem, 

ingredient  of  an  action  for  interfer-  App.  Cas.  534-5-1901,  citing  Mogul 

ence  with  contract;  that  is,  malice,  SS.  Co.  case,  23  Q.  B.  D.  613;  Lumley 

in  the  sense  of  personal  ill  will.    How-  v.  Gye,  2  E.  &  B.  216. 

ever,  wanton  disregard,  on  the  part  *'  Big.  Torts  (8th  ed.),  263. 
of  a  third  person,  of  the  rights  of  two 


Interference  with  Contracts  by  Third  Person    337 

Says  Lord  Watson  of  the  House  of  Lords:  "There  are,  in  my 
opinion,  two  grounds  only  upon  which  a  person  who  procures 
the  act  of  another  can  be  made  legally  responsible  for  its  conse- 
quences. In  the  first  place,  he  will  incur  liability  if  he  knowingly, 
and  for  his  own  ends,  induces  that  other  person  to  commit  an 
actionable  wrong.  In  the  second  place,  when  the  act  induced  is 
within  the  right  of  the  immediate  actor,  and  is  therefore  not 
wrongful  in  so  far  as  he  is  concerned,  it  may  yet  be  to  the  detri- 
ment of  a  third  party;  and  in  that  case,  according  to  the  law  laid 
down  by  the  majority  in  Lumley  v.  Gye,  the  inducer  may  be  held 
liable  if  he  can  be  shown  to  have  procured  this  object  by  the  uso 
of  illegal  means  directed  against  that  third  party."^  A  violation 
of  legal  right  committed  knowingly  is  a  cause  of  action;  and  it 
is  a  violation  of  a  legal  right  to  interfere  with  contractual  relations 
recognized  by  law  if  there  be  no  sufficient  justification  for  the  in- 
terference." ^^  In  Beekman  v.  Marsters/"^  it  is  said  that  "it  has 
been  settled  in  Massachusetts  that  there  is  no  distinction  between 
a  defendant's  enticing  away  the  plaintiff's  servant  and  a  defend- 
ant inducing  a  third  person  to  break  any  other  contract  between 
him  and  the  plaintiff.^^  In  Nolin  v.  Pearson,'"^  defendant  per- 
suaded and  enticed  the  plaintiff's  husband  to  commit  adultery 
and  to  refuse  to  perform  his  marital  contract.  Held  a  wrong 
for  which  the  wife  can  maintain  an  action  without  joining  the 
husband  as  plaintiff."  In  Quinn  v.  Leathem,^^  the  defendants 
wrongfully  and  mahciously  induced  customers  and  servants  to 
cease  to  deal  with  the  plaintiff.    This  was  held  actionable. 

The  question  of  the  effect  of  causing  a  breach  of  contract  by 
one  not  a  party  to  it  was  first  considered  by  the  Supreme  Court 

"  Citing  National  Phonograph  Co.,  Tex.  400;  73  S.  W.  800;  62  L.  R.  A. 

Ltd.,  V.  Edison  Bell,  etc.,  Co.,  1  Ch.  962;  American  Malting  Co.  v.  Keitel, 

335-59-1908.  209  F.  351  (C.  C.  A.):— We  fail  to 

*^  Lord  Macnaughten  in  Quinn  v.  discover  any  satisfactory  distinction 

Leathern,  App.  Cas.  510-1901.  between  an  attempt  to  induce  em- 

"  195  Mass.  205;  80  N.  E.  817.  ployees  to  break  a  contract  of  em- 

"  See  Walker  v.  Cronin,  107  Mass.  ployment  and  an  attempt  to  induce 

555-57;  Moran  v.  Dunphy,  177  Mass.  customers  to  break  their  business  con- 

485;  Jackson  v.  Stairfield,  137  Ind.  tracts  for  the  sale  of  goods." 

592   (contract  for  lumber);   Morgan  ^o  191  Mass.  283-1906. 

V.  Andrews,  107  Mich.  33  (contract  "  See  to  same  effect  Winsmore  v. 

to     construct    machine);     Jones    v.  Greenbank,  Willes,  577. 

Stanley,  76  N.  C.  355  (carriers'  con-  ^s  App.  Cas.  495-1901. 
tract);    Raymond    v.    Yarrington,    96 


33S     Interference  with  a  Competitor's  Business,  Etc. 

of  the  United  States  in  Angle  v.  Chicago,  etc.,  Ry.-''^  The  Court 
cited  Green  v.  Butlon,^^  Lumlcy  v.  Gye,^^  Bowen  v.  Hall,^'-  Walker  v. 
Cronin,^'^  Benton  v.  Pratt,^^  Rice  v.  Manley,^''  Jones  v.  Stanley;  ^'^  all 
of  which  cases  except  the  last  two  were  before  the  House  of  Lords 
in  AUc?i  V.  Flood,^''  and  cited  by  Halsbury,  L.  C,  in  that  case. 

The  opinion  in  Angle  v.  Chicago,  etc.,  Ry.,  was  in  part  as  follows: 
"It  has  been  repeatedly  held,  that  if  one  maliciously  interferes 
in  a  contract  between  two  parties,  and  induces  one  of  them  to 
break  that  contract  to  the  injury  of  the  other,  the  party  injured 
can  maintain  an  action  against  the  wrongdoer."  This  case  does 
not  decide  that  interference  with  a  man's  livelihood,  trade,  or 
business  per  se  creates  a  cause  of  action,  but  that  it  is  actionable 
to  interfere  with  a  contract  mahciously.  The  term  "maliciously  " 
is  not  defined  in  the  case,  and  is  to  be  presumed  to  be  here  used 
in  its  ordinary  legal  meaning. 

Temperton  v.  Russell  ^^  involved  acts  done  to  interfere  with 
the  contracts  with  materialmen  to  supply  builders  who  refused 
to  follow  union  rules.  The  plaintiff,  one  of  these  materialmen, 
sued  the  unions.  These  acts  consisted  of  various  things  done  to 
bring  pressure  on  the  materialmen,  such  as  ordering  their  members 
to  refuse  to  work  on  the  plaintiff's  goods.  It  was  held,  that  these 
acts  were  not  induced  by  malice,  but  nevertheless  were  malicious 
in  the  legal  sense,  the  following  ruling  in  Bowen  v.  Hall  being 
cited:  "If  the  persuasion  be  used  for  the  indirect  purpose  of  in- 
juring the  plaintiff,  or  of  benefiting  the  defendant  at  the  expense 
of  the  plaintiff,  it  is  a  malicious  act,  which  is  in  law  and  in  fact  a 
-wTongful  act,  and  therefore  an  actionable  act,  if  injury  ensues 
from  it.  *  *  *  That  act  is  a  persuasion  by  the  defendant  of 
a  third  person  to  break  a  contract  existing  between  such  third 
person  and  the  i)laintiff."  ^^ 

§  166.  Interference  with  Contracts  with  Servants.  —  From 
early  times  it  has  been  considered  a  legal  wrong  to  entice  away 

"151    U.    S.    1-1893;   affirmed  in         ""^  76  N.  C.  355. 

Bitterman  v.  Louisville  &  Nashville  R.,  "  App.  Cas.  1-1898. 

207  U.  S.  205.  M  1  Q.  B.  715-1893. 

80  2  C.  M.  &  R.  707.  «^  Quinn    v.    Leathern,    App.    Cas. 

»'  2  E.  &  B.  216.  495-509-1901,  holds  that  Temperton 

«  6  Q.  B.  D.  333-37.  v.  Russell,  1  Q.  B.  715-1893,  was  not 

"  107  Mass.  555.  overruled   by   Allen  v.   Flood,   App. 

"  2  Wend.  (N.  Y.)  385.  Cas.  1-1898. 

»  66  N.  Y.  82, 


Interference  with  Contracts  with  Servants       339 

a  servant,  or  to  persuade  him  to  break  the  contract  of  employ- 
ment. This  was  not  limited  to  menial  or  household  servants, 
but  was  extended  to  industrial  employees,  such  as  factory  hands. 
Under  this  rule,  acts  such  as  giving  liquor  to  employees  of  another, 
entertaining  them,  and  inducing  them  by  offer  of  higher  wages 
to  leave  their  employer  or  to  sign  an  agreement  to  that  effect, 
are  actionable. 

Gunter  v.  Astor"^^  was  an  action  on  the  case.  Plaintiff  was 
a  maker  of  pianos;  his  workmen  were  under  no  contract  for  a 
definite  period,  but  worked  by  the  piece.  Defendants  were 
charged  with  conspiring  to  entice  away  plaintiff's  servants. 
They  appear  to  have  invited  the  workmen  to  a  dinner,  plied  them 
with  Hquor,  and,  by  the  offer  of  higher  wages,  induced  them  to 
leave  plaintiff's  service,  and  sign  an  agreement  to  that  effect. 
Plaintiff's  business  was  practically  ruined  in  consequence.  Held, 
that  defendants  were  liable  in  substantial  damages.  Verdict 
for  two  years'  profits  not  interfered  with  by  the  appellate  court.^^ 

At  common  law  a  man  could  not  exercise  a  trade  to  which  he 
had  not  been  duly  apprenticed,  and  one  so  admitted  was  obliged 
by  statute  to  follow  and  exercise  his  trade  under  a  penalty .^^ 
Hence  to  prevent  a  person's  exercising  his  trade  was  to  compel 
him  to  violate  the  law. 

''If  any  person  do  hire  or  retain  my  servant  being  in  my  serv- 
ice, for  which  the  servant  departeth  from  me  and  goeth  to  serve 
the  other,  I  may  have  an  action  for  damages  against  both  the 
new  master  and  the  servant,  or  either  of  them."  ^^ 

'0  Gunter  v.  Astor,  4  J.  B.  Moore,  Firemen's  F.  F.  I.  Co.,  97  Miss.  148 

12-1819,  an  action  on  the  case.    See  (1910),  the  Court,  while  sustaining, 

also  Hart  v.  Aldridge,   1  Cowp.  54-  against  demurrer,  an  action  for  con- 

1774;  Scidmore  v.  Smith,   13  Johns,  spiring  to  injure   one's   business  by 

(N.   Y.)   322-1816;  Stuart  v.  Simp-  persuading   his   employees   to   leave, 

S071,    1    Wend.    (N.    Y.)    376-1828;  say:—"*    *    *    it  may  have  been 

Mealey  v.  Bemidji  Lumber  Co.,  118  perfectly  legitimate  for  the  defendants 

Minn.  427-1912.  to  have  employed  the  agent  of  plain- 

'1  See  also  Walker  v.  Cronin,  107  tiff  and  to  pay  him  better  for  his 

Mass.    555-1871;   Chipley   v.   Atkin-  services    *    *    *    if    the    object    of 

son,  23  Fla.  206-1887;  1  So.  934,  a  the  employment  was  in  the  honest 

carefully  considered  case;  Haskins  v.  furtherance    of    their    own    business 

Royster,   70  N.   C.   601-1874;  Jones  enterprises." 

&   Jester   v.    Blocker,    43    Ga.    331-  '^  Pollock,  Contracts,  313. 

1871;   Bixby  v.   Dunlap,   56   N.   H.  "  Blackstone,  Book  1,  §  429. 
45&-1876.    In  Globe  &  R.  F.  I.  Co.  v. 


340    Interference  with  a  Competitor's  Business,  Etc. 

This  rule  of  law  is  now  incorporated  in  the  statutes  of  some 
states.  For  instance,  the  laws  of  Georgia,^^  provide  that  when 
the  relation  of  landlord  and  tenant,  or  employer  and  employee, 
as  regards  argricultural  lands,  has  been  established  by  written 
contract,  or  parol  contract  partly  performed,  it  is  unlawful  for 
a  third  person  "to  employ  or  to  rent  lands  to  *  *  *  or 
disturb  in  any  way  said  relation  without  first  obtaining  the 
written  consent  of  said  employer,"  etc.^^ 

In  J.  S.  Brown  Hardware  Co.  v.  Ind.  Stove  Works,''^  there  seems 
to  be  the  element  of  fraud  as  well  as  of  inducing  breach  of  con- 
tract, as  there  defendant  induced  plaintiff's  traveling  salesman 
while  in  plaintiff's  employ  under  a  contract  of  exclusive  service, 
to  act  at  the  same  time  in  the  service  of  defendant.  In  these  cases 
it  seems  settled  that  it  is  not  necessary  that  there  should  be  any 
contract  for  a  definite  period.^^ 

The  Harvard  Law  Review,^^  admitting  that  in  cases  where 
the  breach  is  of  a"  contract  involving  no  personal  service  the 
weight  of  authority  is  against  recovery  unless  illegal  means  are 
used,^^  contends  that  there  is  no  valid  reason  for  the  distinction, 
saying :  ' '  The  principle  covering  all  these  cases  would  seem  to  be 
that  anyone  intentionally  causing  pecuniary  loss  to  another  is 
prima  facie  liable." 

On  the  authority  of  the  cases  mentioned  in  the  note  below 
the  Massachusetts  court  has  held  in  Moran  v.  Dunphy,^^  that 
maliciously  and  without  justifiable  cause  to  induce  a  third  person 
to  end  his  employment  by  either  false  slanders  or  successful 
persuasion  is  an  actionable  tort.^^ 

§  167.  Lumley  v.  Gye,  and  Later  Cases.  —  Lumley  v.  Gye,^^ 
marked  a  step  in  the  development  of  the  rule.    It  was  there  held, 

'^Acts  of  1903,  p.  91.   Ga.   Code  578;    Jones    v.    Stanley,    76    N.    C. 

191 1,  §  3712.  355. 

"  McBride  v.  O'Neal,  128  Ga.  473-  »"  177  Mass.  487. 

1907;  57  S.  E.  789;  Miss.  Code,  1892,  "  Walker    v.    Cronin,    107    Mass. 

§  1068,  Code  of  1906,  §  1146,  to  the  555;    Morasse  v.  Brochu,  151  Mass. 

same  effect.  567;    Tasker   v.   Stanley,    153   Mass. 

'«96  Tex.  453-1903;  73  S.  W.  800.  148;   Vegelahn  v.  Gunter,  167  Mass. 

"  Chiplcy  V.  Atkinson,  23  Fla.  206-  92;   Hartnctt   v.   Plumbers,   etc.,    169 

1887;  1  So.  934.  Mass.    229;     Weston    v.    Barnicoat, 

"Vol.  16,  p.  228.  175  Mass.  454;  Plant  v.  Woods,  176 

"See    Boyscn   v.    Thorn,   98   Cal.  Mass.  492. 

*2  2  E.  &  B.  216-1853. 


LuMLEY  V.  Gye,  and  Later  Cases  341 

that  defendant  was  guilty  of  a  tort,  in  inducing  an  opera  singer 
to  refuse  to  perform  her  contract  to  sing  at  the  plaintiff's  theatre, 
and  the  plaintiff's  contract  rights  were  protected  by  injunction. 
The  contract  was  wholly  executory,  and  the  wrong  could  hardly 
be  placed  under  the  familiar  category  of  enticing  away  servants, 
but  the  case  may  be  regarded  as  the  starting  point  of  the  develop- 
ment of  the  law  which  has  now  resulted  in  the  establishment  of 
the  broad  rule. 

This  was  followed  in  Bowen  v.  HallP  The  plaintiff,  a  brick 
manufacturer,  entered  into  a  contract  with  one  Pearson,  in  view 
of  his  special  skill  and  knowledge  of  certain  secret  processes, 
under  which,  for  a  period  of  years,  Pearson  was  to  supervise  the 
manufacture  of  certain  kinds  of  brick,  finding  all  labor  and  a  part 
of  the  materials.  Defendants,  rivals  in  trade,  persuaded  him  to 
break  his  contract  and  enter  their  employ.  This  was  held  to  be 
actionable.  Similarly  a  president  of  a  corporation  who  caused 
the  corporation  to  refuse  to  complete  a  contract,  with  the  purpose 
of  injuring  the  plaintiff,  was  successfully  proceeded  against  per- 
sonally.^'* 

In  Taylor  Iron  &  Steel  Co.  v.  Nichols,^^  defendant  Nichols  was 
employed  by  complainant  and  taught  its  secret  processes  in  the 
manufacture  of  steel,  under  an  agreement  not  to  divulge  the  same. 
His  co-defendant  was  a  competing  company,  which  induced 
Nichols  to  violate  his  contract  and  enter  its  employ,  disclosing 
to  it  these  trade  secrets.  Complainant  was  held  entitled  to  a 
preliminary  injunction  restraining  defendants  from  disclosing 
trade  secrets,  and  restraining  defendant  company  from  employ- 
ing Nichols  during  the  term  of  his  contract  with  complainant, 
although  not  to  an  injunction  restraining  Nichols  from  entering 
the  employ  of  another  during  that  period. 

In  California,  "maliciously  inducing  another  to  break  his 
contract  with  a  third  person  will  not  create  a  liability  to  the 
latter,  when  it  is  done  without  threats,  violence,  falsehood,  de- 

83  L.  R.,  6  Q.  B.  Div.  333-1881.  plete  the  contract.    Plaintiff  sued  the 

^*  Jones  V.  Stanly,  76  N.  C.  355-  president  personally  for  causing  this 

1877.     Plaintiff  had  contracted  with  breach  of  his  contract  with  the  rail- 

a   railroad   company   to   carry   cross  road  company  and  was  held  entitled 

ties  for  him.     Defendant,  the  presi-  to  recover. 

dent  and  superintendent  of  the  rail-         ^^yg  N.  J.  Eq.  541-1905;  s.  c.  65 

road  company,  for  the  purpose  of  in-  Atl.  695-1907. 

juring  the  plaintiff,  refused  to  com- 


342    Interference  with  a  Competitor's  Business,  Etc. 

ception,  or  benefit  to  the  person  inducing  the  breach."*^''  The 
same  is  held  in  Kentucky,  Chambers  v.  Baldwin,^'^  Boulier 
V.  Macauley;^^  in  Missouri,  Glencoe  Land  Co.  v.  Hudson 
Bros.^^  In  Boulier  v.  Macauley,^^  BouHer  contracted  with  an 
actress  to  play  at  his  theatre.  Later  defendant  caused  her  to 
break  the  contract.  Held  there  was  no  cause  of  action.  The 
facts  of  the  case  are  very  similar  to  Lumley  v.  Gye,  supra.^^ 

In  New  Hampshire  a  binding  contract  of  service  is  held  neces- 
sary.°- 

§  168.  Causing  Breach  of  Contracts  for  Furnishing  Informa- 
tion. —  The  doctrine  in  question  has  been  applied  also  to  con- 
tracts for  the  furnishing  of  market  quotations  under  certain  re- 
strictions as  to  their  use  by  the  one  buying  them,  such  as  that 
they  should  not  be  divulged.  One  who  acquires  information, 
either  by  discovery  or  by  labor,  is  entitled  to  the  aid  of  law  to 
protect  the  information  as  a  secret.  The  fact  that  others  might 
do  similar  work  is  no  reason  why  they  may  steal  plaintiff's  in- 
formation. This  information  may  be  communicated  to  others 
who  are  in  confidential  relations  with  the  owner;  and  if  a  contract 
exists  between  owner  and  customer  that  the  customer  will  not 
make  the  information  public,  it  will  be  enforced  by  equity,  and 
third  persons  will  be  restrained  from  using  this  knowledge  if  they 
obtain  it  from  any  customer  in  violation  of  his  contract.^^  ''The 
plaintiff  does  not  lose  its  rights  by  communicating  the  result 
to  persons,  even  if  many,  in  confidential  relations  to  itself,  under 
a  contract  not  to  make  it  public,  and  strangers  to  the  trust  will 
be  restrained  from  getting  at  the  knowledge  by  inducing  a  breach 
of  trust  and  using  knowledge  obtained  by  such  a  breach."  ^^ 

^Boysen  v.  Thorn,  98  Cal.  578.  tion  Co.,  183  Mass.  62-1903;  66  N. 

8'  91  Ky.  121.  E.  204;  60  L.  R.  A.  810;  Board  of 

8*91  Ky.  135.  Trade  v.  C.  B.  Thomson  Commission 

8"  138  Mo.  439.  Co.,  103  Fed.  902-1900  (C.  C.  Wis.); 

9«91  Ky.  135.  Board  of  Trade  v.  Hadden-Krull  Co., 

91 2  El.  &  Bl.  216-1853.  109    Fed.    705-1901    (C.    C.    Wis.); 

92  Campbell  v.  Cooper,  34  N.  H.  49.  National  Telegraph  News  Co.  v.  West- 
But  see  also  Noice  v.  Brown,  39  N.  J.  em  Union  Telegraph  Co.,  119  Fed. 
L.  569;  Haskins  v.  R(yyster,  70  N.  C.  294-1902  (C.  C.  A.  7th  Cir.);  60  L.  R. 
601.  A.  805. 

93  Exchange  Telegraph  Co.  v.  Greg-  ^*  Board  of  Trade  v.  Christie  Grain 
ory  d-  Co.,  1  Q.  B.  D.  147-1896;  F.  W.  &  Stock  Co.,  198  U.  S.  236-50-1904; 
Dodge   Co.    v.    Construction   Informa-  49  L.  ed.  1031 ;  25  Sup.  Ct.  637. 


Breach  of  Contracts  with  Transportation  Companies    343 

The  same  has  been  held  in  England.  In  the  case  of  Exchange 
Telegraph  Co,  v.  Gregory  &  Co.,^'"  it  was  held,  that  the  plaintiff 
which  published  the  stock  exchange  news  to  subscribers,  in  con- 
fidence, under  contract,  was  entitled,  not  only  to  an  injunction 
against  a  subscriber  divulging  the  news  in  violation  of  his  contract, 
but  also  to  restrain  an  outsider  from  inducing  subscribers  to 
communicate  the  news  to  him  contrary  to  the  terms  of  such  con- 
tract, these  terms  being  known  to  the  outsider ;  and  that  no  proof 
of  special  damage  was  necessary.  Said  the  court:  ''Merely  to 
persuade  a  person  to  break  his  contract  may  not  be  wrongful  in 
law  or  fact  *  *  *;  but  if  the  persuasion  be  used  for  the  indirect 
purpose  of  injuring  the  plaintiff  or  of  benefiting  the  defendant  at 
the  expense  of  the  plaintiff,  it  is  a  malicious  act  which  is  in  law  and 
in  fact  a  wrong  act,  and  therefore  a  wrongful  act,  and  therefore 
an  actionable  act  if  injury  ensues  from  it."  The  case  of  Exchange 
Telegraph  Co.,  Ltd.,  v.  Central  News  ^^  is  to  the  same  effect.  In  all 
of  these  cases  will  be  found  a  breach  of  contract  induced  by  some 
third  person  for  his  own  profit. 

§  169.  Causing  Breach  of  Passengers'  Contracts  with  Trans- 
portation Companies.  —  The  rule  has  been  repeatedly  applied 
to  dealings  by  ticket  brokers  in  nontransferable  tickets,  such  as 
return  coupons;  and  they  have  been  enjoined  from  buying  and 
selling  such  tickets  on  the  ground  that  they  could  only  do  so  by 
inducing  those  from  whom  they  bought  them  to  violate  their 
contract  with  the  transportation  company  not  to  transfer  such 
coupons.  While  somewhat  different  grounds  for  these  decisions 
have  been  suggested,  they  are  distinctly  placed  upon  the  ground 
of  interference  with  contract.  The  United  States  Supreme 
Court  in  Bitterman  v.  Louisville  &  Nashville  R.  R.,  has  so 
held.^^  The  court  there  cites  and  applies  the  rule  laid  down 
in  Angle  v.  Chicago,  St  Paul,  etc.,  Ry.  Co.,^^  "that  an  actionable 
wrong  is  committed  by  one  who  'maliciously  interferes  in  a  con- 
tract between  two  parties,  and  induces  one  of  them  to  break  that 
contract  to  the  injury  of  the  other,'  "  deeming  it  clear  that  this 
principle  "embraces  a  case  like  the  present,  that  is,  the  carrying 
on  of  the  business  of  purchasing  and  selling  nontransferable 

9s  73  L.   T.    120-24-1895.  in  Missouri,  K.  &  T.  Ry.  Co.  v.  Mc- 

^2  Ch.  48-1897.  Crary,  182  Fed.  401. 

97  207  U.  S.  205-23-1907.    Followed         »« 151  U.  S.  1-1893;  38  L.  ed.  55; 

14  Sup.  Ct.  240. 


'M4    Interference  with  a  Competitor's  Business,  Etc. 

railroad  tickets  for  profit,  to  the  injury  of  the  raihoad  company 
issuing  such  tickets"  and  remarking  that  *'it  is  not  necessary 
that  the  ingredient  of  actual  malice  in  the  sense  of  personal  ill- 
will  should  exist;"  and  that  in  such  a  case,  the  "wanton  disregard 
of  the  rights"  of  the  complaining  party  constituted  legal  malice 
within  the  meaning  of  the  foregoing  statement  of  the  rule. 

There  are  several  decisions  of  the  lower  federal  courts  to  the 
same  effect  as  the  Bitterman  case.  A  New  York  (Special  Term) 
opinion,  which  is  of  doubtful  authority,  is  opposed  to  these  cases.^^ 

To  Summarize.  —  From  the  foregoing  pages,  it  will  be  seen 
that  one  who  interferes  in  a  transaction  between  other  persons 
who  are  about  to  enter  into,  or  are  already  under  contract  obliga- 
tion to  each  other,  may  often,  not  always,  be  held  for  damages 
or  enjoined.  The  cases  mentioned  above  do  not  include  the  class 
of  cases  most  closely  related  to  unfair  competition  as  the  term  is 
usually  understood.  They  have  been  discussed  because  they 
serve  to  illustrate  various  applications  of  this  principle  which  is 
now  under  such  frequent  discussion. 

We  will  now  take  up  various  cases  which  seem  to  show  the 
present  understanding  as  to  what  is  such  interference  with  a 
contract  as  will  afford  ground  for  an  action  at  law  for  damages 
or  for  a  preventive  remedy  in  equity. 

§  170.  What  Constitutes  Interference  with  Contract. —  Per- 
sons who  are  not  lawyers  are  inclined  to  believe  that  everything 
is  lawful  which  is  not  criminally  punishable.  This  is  a  serious 
misconception.  To  break  a  contract  is  to  commit  a  wrong.  Pay- 
ing damages  does  not  make  a  wrong  action  a  right  one.  A  breach 
of  contract  would  not  be  actionable  if  it  was  a  right  thing  to  do. 

If  a  co-contractor  refuses  to  concur  in  a  breaching  of  a  contract 
it  is  no  justification  of  the  other  contracting  party,  or  of  a  third 
person  who  causes  a  breach,  that  they  believed  a  breach  would 
benefit  the  co-contractor.    Nor  is  the  fact  that  they  believed  that 

^^  Illinois  Cent.  R.  Co.  v.  Caffrey,  v.  Reeves,  85  N.  Y.  Supp.  28-1903; 

128  Fed,  770-1904  (C.  C.  Mo.);  D.,  disapproved  in  Bitterman  v.   Louis- 

L.  &  W.  R.  Co.  V.  Frank,  110  Fed.  ville  &  Nashville  R.,  supra.    The  ques- 

689-1901  (C.  C.  W.  D.  N.  Y.);  Nash-  tion  under  consideration  was  hardly 

ville,  C.  &  St.  L.  Ry.  Co.  v.  McConnell,  discussed  in  the  opinion  by  Lambert, 

82    Fed.    65-1897    (C.    C.    Tenn.);  J.,  though  really  involved;  the  whole 

Penn.  R.  Co.  v.  Beekman,  30  Wash,  question  before  the  court,  as  remarked 

(D.  C.)  Law  Rep.  715-1902.    Contra,  by  the  Justice,  having  become  purely 

the  case  of  A^.  Y.  C.  &  H.  R.  R.  Co.  academic  through  lapse  of  time. 


What  Constitutes  Interference  with  Contract    345 

their  breach  would  do  the  other  party  no  harm;  or  the  fact  that, 
on  moral  or  religious  grounds,  they  feel  they  should  not  perform 
the  contract,  any  excuse  for  not  doing  what  they  agree  to  do. 
Lord  Halsbury  thinks  that  if  there  are  sometimes  cases  where  a 
person  is  justified  on  moral  or  religious  grounds  in  breaking  a 
contract,  there  is  in  such  cases  the  question  whether  or  not  there 
is  not  an  equally  strong  reason  why  he  who  breaks  the  contract 
should  not  indemnify  the  person  whom  the  breach  injures.^ 

There  are  at  least  two  ways  of  interfering  with  contracts  made 
by  other  persons:  (a)  by  preventing  a  contract  being  made,  (6) 
by  causing  the  parties  to  it  to  break  it  after  it  is  made.  Mr. 
Bigelow  claims  that  to  make  a  prima  facie  cause  of  action  for 
procuring  one  person  not  to  contract  with  another,  three  things 
must  be  shown:  (1)  Notice  to  the  defendant  of  the  plaintiff's 
relation  to  the  third  person;  (2)  interference  with  that  relation; 
(3)  damage.^  In  Temper  ton  v,  Russell,^  it  was  set  up  that  a  dis- 
tinction exists  between  inducing  the  breach  of  a  contract  already 
entered  into  and  inducing  persons  not  to  enter  into  contracts,  but 
the  court  refused  to  sustain  it,  saying  that  the  same  wrongful 
intent  existed  in  both  cases  and  the  same  sort  of  injury  to  the 
plaintiff.  Gregory  v.  Duke  of  Brunswick  *  was  cited  as  sustaining 
the  rule  that  acts  which  prevent  contracts  being  made  are  action- 
able. In  this  case  judgment  was  given  for  defendant  on  alle- 
gations showing  that  he  with  others  had  conspired  to  cause  dis- 
turbance at  a  theatre  which  prevented  persons  coming  to  see  and 
hear  plaintiff,  an  actor,  perform.  See  the  section  of  this  chapter 
entitled  ''Interference  with  proposed  or  prospective  contracts." 

There  are  a  number  of  cases  to  be  found  in  which  there  was 
interference  with  a  contract,  but  there  is  no  definite  statement 
of  a  rule  of  law  in  them.  For  instance,  in  Benton  v.  Pratt, ^  third 
parties  agreed  to  purchase  of  plaintiff  200  hogs  to  be  delivered 
three  or  four  weeks  later,  provided  the  purchasers  had  not  been 
previously  supplied.  Later  plaintiff  started  with  his  drove  of 
hogs  for  the  town  where  they  were  to  be  delivered,  and  on  the 
way  overtook  the  defendant  with  another  drove.  Defendant 
told  plaintiff  he  was  going  to  another  town,  and  plaintiff  disclosed 

1  South  Wales  Miners'  Federation  U  Q.  B.  715-28-1893. 
V.  Glamorgan  Coal  Co.,  App.  Cas.  "  6  M.  &  G.  953-1844. 
245-1905.  5  2  Wend.  (N.  Y.)  385-1829. 

2  Bigelow  Torts  (8th  Am.  eel),  238. 


346     Interference  wvvu  a  Competitor's  Business,  Etc. 

the  particulars  of  his  own  sale.  Defendant  then  arranged  to  get 
away  with  his  drove  first,  took  them  to  plaintiff's  buyer  and 
represented  that  plaintiff  was  going  to  another  town  and  did  not 
intend  to  perform  his  contract.  Thereupon  plaintiff's  vendees 
jiurchased  defendant's  hogs  and  refused  to  purchase  plaintiff's, 
when  he  arrived  later.  Held,  that  plaintiff  was  entitled  to  re- 
cover damages.  In  Rice  v.  Manleyf'  the  plaintiffs  agreed  with 
Stebbins  to  buy  cheese  for  future  delivery  at  Cattaraugus.  De- 
fendant knew  of  this  agreement,  and  to  deprive  the  plaintiffs  of 
the  benefit  of  it  caused  a  telegram  to  be  sent  to  Stebbins  signed 
"E.  Rice,"  which  he  intended  Stebbins  should  understand  to  be 
one  of  the  plaintiffs,  to  the  effect  that  he  could  sell  the  cheese 
and  that  the  plaintiff  did  not  want  it.  He  took  the  dispatch  to 
the  telegraph  office  and  then  carried  it  to  Stebbins,  and  by  this 
fraud  induced  Stebbins  to  sell  and  deliver  the  cheese  to  him  before 
the  date  of  delivery  to  the  plaintiffs  arrived.  Earl,  J.,  held, 
citing  Coke,  J.,  in  3  Bulstr.  95,  that  ''fraud  without  damage,  or 
damage  without  fraud,  gives  no  cause  of  action;  but  where  these 
two  concur  an  action  lies,"  and  that  the  plaintiffs  would  have 
been  damaged  by  reason  of  the  defendant's  fraud.  ''Schemes  of 
fraud  may  be  so  cunningly  devised  as  to  elude  the  eye  of  justice, 
but  they  must  not  escape  condemnation  and  reparation  when 
discovered  "  (id.  p.  87).  Judgment  for  the  plaintiff.^  In  1895  it 
was  held  in  Rice  v.  Alhee,^  that  a  third  person  who  persuaded  A. 
not  to  enter  into  a  partnership  with  B.  did  not  commit  a  wrongful 
act.  Later,  in  1900,  speaking  of  a  case  where  a  trade  union  in- 
terfered with  employees  of  a  third  person,  the  court  said,  in  Plant 
V.  Woods:  °  " It  is  not  necessary  that  the  liberty  of  the  body  should 
be  restrained.  Restraint  of  the  mind,  provided  it  would  be  such 
as  would  be  likely  to  force  a  man  against  his  will  to  grant  the  thing 
demanded,  and  actually  has  that  effect,  is  sufficient  in  cases  like 
this"  (id.  p.  502);  and  following  this  case,  in  Berry  v.  Donovan,^^ 
the  plaintiff  worked  for  one  who  had  agreed  not  to  employ  any 
but  union  men.    The  plaintiff  was  a  non-union  man.    The  union, 

"  66  N.  Y.  82-1876.  Dung  v.  Parker,  52  N.  Y.  494-1873, 

^  Citing  Benton  v.  Pratt,  2  Wend,  distinguished. 

(N.  Y.)  385-1829;  Snow  v.  Judson,  « i64  Mass.  88;  41  N.  E.  122. 

38  Barb.   (N.  Y.)   210-18G2;  Pasleij  » 176   Mass.   492-1900;   57   N.   E. 

V.  Freeman,  3  Term  Rep.  51-1789;  1011;  51  L.  R.  A.  339. 

Whit£  V.  Merrill,  7  N.  Y.  352-1852;  "  188  Mass.  353-1905;  74  N.   E. 

603;  5  L.  R.  A.  N.  S.  899. 


What  Constitutes  Interference  with  Contract    347 

without  any  threats,  asked  the  employer  to  discharge  the  plain- 
tiff, and  he  did  so.  Knowlton,  C.  J.,  held  this  act  unlawful. 
The  decision  of  the  case  turned  largely  on  what  was  fair  and 
unfair  competition.  The  union  contended  that  this  interference 
was  "a  kind  of  competition"  (p.  357).  Held,  that  ''an  inter- 
ference by  a  combination  of  persons,  to  obtain  the  discharge  of  a 
workman  because  he  refuses  to  comply  with  their  wishes,  for 
their  advantage,  in  some  matter  in  which  he  has  a  right  to  act 
independently,  is  not  competition  "  (p.  357). 

A  tourist  agent  who  obtained  an  exclusive  contract  within 
specified  territory  to  represent  a  certain  hotel,  has  enjoined  a 
competitor  who  attempted  to  induce  the  hotel  company  to  break 
the  contract.  The  opinion  of  Loring,  J.,  carefully  discusses  the 
whole  subject,  including  the  distinction  between  cases  involving 
an  interference  with  rights  under  a  contract  actually  existing,  and 
those  involving  interference  with  another's  general  right  to  make 
contracts  and  do  business.  The  tourist  agent,  at  Boston,  con- 
tracted with  a  company  having  the  only  hotel  in  the  Jamestown 
Exposition  Grounds,  to  act  as  its  exclusive  agent  in  New  England. 
Defendant,  a  rival  agent,  then  represented  to  the  hotel  company 
that  it  was  a  mistake  to  make  any  one  man  the  exclusive  New 
England  agent,  that  plaintiff's  business  was  insignificant,  and 
that  he  had  made  false  statements  as  to  his  subagencies.  He 
thus  influenced  the  company  to  grant  him  similar  rights  of  repre- 
sentation, without  regard  to  its  exclusive  contract  with  plaintiff. 
The  defendant  was  enjoined  from  acting  as  the  company's  agent 
in  New  England,  and  from  interfering  with  plaintiff's  exclusive 
rights." 

The  acts  of  a  corporation,  by  which  a  rival  corporation  is 
prevented  from  completing  a  railroad,  and  is  thereby  caused  to 
forfeit  land  granted  to  it  conditionally  on  its  completing  the 
road  in  a  given  time,  are  actionable  and  an  action  on  the  case 
will  lie  in  such  a  case.  Equity  will  impress  on  the  lands  which 
the  offending  corporation  fraudulently  prevented  the  other  from 
securing,  and  obtained  for  themselves,  a  trust  ex  maleficio  or  ex 
delicto. ^^  This  case  involved  distinctly  fraudulent  dealing,  but 
the  decision  is  based  upon  the  broader  ground;  and  the  case  seems 

^^  Beekman  v.  Marsters,  195  Mass.  ^^  Angle  v.  Chicago,  St.  Paul,  etc., 

205-1907;  80  N.  E.  817;  11  L.  R.  A.  Rij.  Co.,  151  U.  S.  1-1893;  38  L.  ed. 
N.  S.  201.  55;  14  Sup.  Ct.  240. 


348    Interference  with  a  Competitor's  Business,  Etc. 

to  be  authority  for  the  proposition  that  it  is  actionable  not  only 
to  induce  breach  of  contract  by  direct  means,  such  as  persuasion 
and  inducement,  but  also  to  bring  it  about  by  indirect  means,  if 
employed  deliberately  and  without  justification  for  the  same  end, 
as  by  disabling  a  party  from  performing  the  contract.  The  facts 
were  these:  a  railway  company  (briefly  described  as  the  Portage 
Company)  holding  a  land  grant  from  the  state  on  condition  of 
completing  a  railroad  by  a  certain  time,  made  a  contract  with  one 
Angle  to  construct  a  portion  of  the  line.  Defendant,  a  compet- 
ing railway  company,  by  bribing  officers  of  the  Portage  Company, 
wrongfully  obtained  an  injunction,  and  otherwise  secured  control 
of  the  Portage  Company,  preventing  Angle  from  completing  his 
work,  and  rendered  the  Portage  Company  insolvent,  so  that 
Angle  was  unable  to  collect  from  it  a  judgment  obtained  against 
it  for  damages  for  breach  of  contract.  The  defendant  was  held 
liable  to  Angle  for  his  damages  on  the  ground  that  it  had 
maliciously  interfered  in  the  contract  and  brought  about  its 
violation. 

Persons  inducing  the  breach  of  the  provisions  of  a  lease,  result- 
ing in  preventing  the  lessee  from  carrying  on  a  profitable  business, 
were  held  liable  in  Martens  v.  Reilly.'^^ 

Unless  the  contract  with  which  the  defendant  attempts  to 
interfere  is  in  its  nature  a  valid  one,  no  liability  will  ordinarily 
arise.  Thus  in  Bobbs-Mcrrill  Co.  v.  Straus, ^'^  a  book  was  pub- 
lished by  complainants  with  a  notice  that  no  dealer  was  hcensed 
to  sell  it  at  less  than  one  dollar,  the  retail  price  of  the  book,  and 
that  a  sale  at  a  lower  price  would  be  treated  as  an  infringement 
of  the  copyright.  Defendants  purchased  copies  from  whole- 
salers, who  had  entered  into  no  contract  with  complainants,  and 
proceeded  to  sell  them  at  eighty-nine  cents.  Defendants  held 
not  liable;  injunction  denied.  But  a  contract  need  not  be  legally 
enforceable  (e.  g.,  under  the  statute  of  frauds)  to  entitle  its  holder 
to  recover  damages  from  one  interfering  and  inducing  its  breach.'^ 

And  it  makes  no  difference  that  the  contract  is  one  that  might 

"109   Wis.    4G4-1901;   84   N.    W.  373.     But    see   fact   that   in    Benton 

840;  and  see  Twitchell  v.  Nelson,  126  v.    Pratt    and   Rice    v.    Manley,    the 

Minn.  423.  contract  was  void  under  the  statute 

•^  147  Fed.   15-1906  (C.  C.  A.  2d  of  frauds. 
Cir.),  affirmed,  210  U.  S.  339-1907.  '^Cumberland    Glass    Mfg.    Co.    v. 

See,  to  similar  effect,  Dr.  Miles  Medi-  De  Witt,  120  Md.  381-1913. 
cal  Co.  V.  Park  &  Sons  Co.,  220  U.  S. 


What  Constitutes  Interference  with  Contract    349 

be  terminated  at  any  time  by  the  other  party,  as  where  the  con- 
tract is  only  from  day  to  day.^^ 

It  is,  for  example,  actionable  to  cause  the  discharge  of  plaintiff, 
as  employee  of  another,  though  he  was  employed  only  at  will.  ^^ 

Causing  one  under  a  contract  to  supply  work,  labor,  or  services, 
or  goods  to  a  competitor,  to  cease  to  carry  out  his  contract  is 
actionable.  As  where  a  carpenter  is  prevented  by  threats,  from 
performing  his  contract  with  plaintiff  to  build  a  house  for  him :  ^^ 
Damages  were  allowed  in  a  case  where  the  plaintiff  was  conduct- 
ing a  laundry  business,  but  had  no  plant  of  her  own,  and  had 
entered  into  contracts  with  various  laundries  to  do  her  work,  and 
the  defendants,  apparently  competing  laundrymen,  by  induce- 
ments and  threats,  persuaded  several  of  these  laundries  to  break 
their  contracts  with  the  plaintiff  and  refuse  to  do  her  work.^^ 

In  Heath  v.  American  Book  Co.,^^  plaintiffs  had  entered  into 
a  contract  with  the  state,  pursuant  to  a  statute,  to  supply  for 
five  years  all  of  a  certain  class  of  text-books  required  for  use  in 
public  schools  of  the  state.  Defendant  knowing  that  this  contract 
was  in  force,  induced  the  school  boards  of  certain  counties  to  sub- 
stitute certain  of  its  books  for  those  furnished  by  plaintiff,  and  was 
adjudged  liable  in  damages. 

There  may  be  general  solicitation  of  business  by  a  tradesman, 
which,  if  successful,  will  actually  result  in  the  breaking  of  con- 
tracts, but  which  does  not  include  such  direct  and  deliberate  in- 
ducement to  break  contracts  as  to  be  actionable.  The  line  may 
be  somewhat  hard  to  draw.^^ 

i«  McCarter  v.  Baltimore  Chamber  of  F.  553,  a  distinction  is  suggested  be- 

Commerce,  126  Md.  131-1915.  tween   mere   solicitation   of   business 

"Scott  V.  Prudential  Outfitting  Co.,  (regardless  whether  the  business  can 

92  Misc.  195  (155  N.  Y.  Supp.  497);  be   given   without   breaking   existing 

Warschav^er    v.    Brooklyn    Furniture  contracts)    and    active    interference, 

Co.,  159  A.  D.  81;  Moran  v.  Dunphy,  The  Court  says   (p.   561):  — 

177  Mass.  485.  "Hence,    while   the   law   allows    a 

'8  Day  V.  Hunnicutt,  160  S.  W.  134-  trader,  by  mere  solicitation,  to  per- 

1913.  suade    customers     to    change    their 

"  Doremus    v.    Hennessy,    176    111.  business  relations,  without  actionable 

608-1898;  52  N.  E.  924;  43  L.  R.  A.  liabihty   therefor,    though    a    broken 

797.  contract   is   the   result,   it   does   not 

2097    Fed.    533-1899    (C.    C.    W.  permit  such  a  solicitor  even  in  the 

Va.)  interests  of  competition,  to  go  further, 

21  In  Citizens'  Light  H.  &  P.  Co.  v.  intervening  actively  between  the  con- 

Montgomery  Light  &  Power  Co.,  171  tracting  parties,  as  a  dominant  agency 


350    Interference  with  a  Competitor's  Business,  Etc. 


But  the  offering  of  goods  at  lower  prices,  thus  inducing  one  under 
contract  to  break  that  contract,  and  to  buy  goods  of  plaintiff  is 
actionable,  and  is  not  justified  by  the  motive  of  trade  compe- 
tition." 

Conspiracy  with  another  to  induce  breach  of  contract  is  held 
to  be  equally  actionable  with  direct  action.-^ 

§  171.  Justification  of  Interference  with  Contracts.  —  There 
are  probably  still  some  exceptional  circumstances  justifying  one 
who  deliberately  induces  the  violation  of  a  contract  but  legitimate 
self-interest  is  not  such  a  justifying  circumstance.  Sir  Fred- 
erick Pollock  (Torts,  9th  Ed.,  p.  339)  says:  "But  it  seems 
that  there  must  be  some  exceptions  in  the  nature  of  privilege 
for  disinterested  advice  honestly  given  upon  a  proper  occasion." 
And  English  judges  have  intimated  a  like  opinion.^'* 


in  producing  a  breach,  by  promise  of 
indemnity  to  one  of  them  to  induce 
the  breach.     *     *     *" 

And  in  Sperry  &  Hutchinson  Co.  v. 
Pommer,  208  Fed.  804,  it  is  said  that 
"persistent  solicitation  of  complain- 
ant's customers  generally  to  take  and 
put  in  the  Palace  stamps,  such  solic- 
itors knowing  that  such  customers  " 
were  under  exclusive  contracts  with 
complainant,  would  constitute  un- 
lawful interference  with  business; 
but  it  was  not  considered  that  the 
evidence  in  this  case  showed  more 
than  general  recommendations  of 
Palace  stamps  to  merchants  and  readi- 
ness to  furnish  them,  without  in- 
quiring into  the  question  whether 
exclusive  contracts  with  the  rival 
company  existed.  Expressions  of 
opinion,  in  good  faith,  that  a  contract 
with  a  rival  is  void,  are  not  deemed 
actionable  (p.  812). 

"  Cumberland  Glass  Mfg.  Co.  v. 
De  Witt,  120  Md.  381  (1913). 

2»  In  Motley,  Green  &  Co.  v.  Detroit  S. 
&  S.  Co.,  161  Fed.  389-1908  —  it  was 
said:  —  "If  it  be  an  actionable  wrong 
for  a  third  person  to  interfere  in  a  con- 
tract and  induce  one  of  the  parties 


thereto  to  break  it  to  the  injury  of  the 
other,  can  it  be  said  it  is  not  equally 
wrong  for  one  of  the  parties  to  the  con- 
tract to  invite  a  third  party  to  unite 
with  him  and  aid  him  in  breaking  the 
contract  in  such  a  way  as  possibly  to 
escape  liability  in  an  action  for  non- 
performance and  gaining  his  consent, 
to  act  together  in  consummating  their 
agreement?" 

2^  "It  is  true  that  great  difficulty 
arises  when  hypothetical  cases  are 
suggested  of  advice  given  under  a 
great  moral  sense  of  right,  or  where 
great  good  would  result  from  a  con- 
tract being  broken,  or  where  the 
claims  of  relationship  or  guardian- 
ship demand  an  interference  amount- 
ing to  protection.  Each  of  these 
cases  must  be  determined  as  it 
arises,"  *  *  *  [Per  Lord  James,  in 
South  Wales  Miners  Federation  v. 
Glainorgan  Coal  Co.  (1905),  A.  C.  239, 
249.  In  this  case,  though  actual  malice 
was  not  deemed  essential  to  liability, 
there  were  found  to  be  no  such  cir- 
cumstances as  to  justify  advising  the 
breach  of  a  separate  contract.]  And 
Lord  Lindlcy  said  in  the  same  case 
(p.  254):  "That  there  are  cases  in 


Ignorance  of  Contract  No  Defense  Against  Injunction    351 

In  Faunce  v.  Searles  ^^  the  defendants  were  held  liable  in  dam- 
ages, for  maliciously  procuring  plaintiff's  discharge  from  his  office 
of  school  superintendent,  held  under  contract,  but  the  opinion 
intimates  that  the  good  faith  of  the  defendants,  one  being  a  mem- 
ber of  the  school  board  and  the  other  a  patron  of  the  school,  might 
have  had  an  important  bearing  upon  the  question  of  liability. 

§  172.  Ignorance  of  the  Existence  of  the  Contract  is  no  De- 
fense Against  an  Injunction.  —  Ignorance  of  the  contract  relation 
may  be  a  defense  to  an  action  at  law  for  damages  in  such  cases 
as  these,  but  would  not  necessarily  be  a  sufficient  reason  for 
denying  an  injunction  against  the  new  emi)loyer_,  or  against  the 
employee  who  had  broken  his  contract.  And  while  the  general 
rule,  as  above  stated  (p.  345)  is  that  there  must  be  notice  of  a 
contract  to  charge  one  with  liability  for  inducing  its  breach, 
notice  is  ordinarily  enough  and  good  faith  may  not  suffice  as  a 
defense.  For  example,  if  the  defendant  knew  of  the  contract 
and  of  such  circumstances  as  to  charge  him  with  knowledge  that 
it  was  still  in  force,  he  is  liable  for  inducing  its  breach  (as  by 
purchasing  from  the  seller  land  contracted  to  be  sold  to  another), 
even  though  by  a  mistake  of  law  he  supposed  the  contract  to  have 
lapsed.  His  erroneous  belief  might  ''relieve  him  from  any  taint 
of  moral  turpitude,  but  not  of  remediable  responsibility. "^^ 

§  172".  Procuring  Breach  of  Contract  Not  to  Re-enter  Busi- 
ness. —  The  rule  under  consideration  has  been  applied  by  hold- 
ing liable  third  persons,  who  induced  the  breach  of  an  agree- 
ment not  to  engage  in  business  again,  which  contracts  had  been 
made  by  one  selling  his  business,  or  by  a  former  partner. 

Where  a  person  has  bound  himself  by  contract  not  to  engage 
in  business  on  his  own  account  or  for  another  in  competition 
with  complainant,  he  will  be  enjoined  from  violating  the  contract. 
And  a  person  who  had  employed  him  will  be  enjoined  also  from 
continuing  to  employ  him  in  a  competing  business,  and  the  fact 
that  such  employer  acted  in  ignorance  of  the  contract  was  held 
to  be  no  defense  in  the  injunction  proceedings.^'' 

Two  partners  on  selling  their  business  to  plaintiff,  stipulated 

which  it  is  not  actionable  to  exhort  ^^  122  Minn.  343-1913.. 

a  person  to  break  a  contract  may  be  ^6  McLennan   v.    Church,  163  Wis. 

admitted;  and  it  is  very  difficult  to  411;  158  N.  W.  73-1916. 

draw  a  sharp  Hne  separating  all  such  -^  .1.  Booth  &  Co.  v.  Davis,  127  Fed. 

cases  from  all  others."  875-1904  (C.  C.  Mich.). 


352    Interference  with  a  Competitor's  Business,  Etc. 

not  to  engage  in  a  similar  business  in  a  certain  territory.  One  of 
the  i)artncrs  violated  this  contract,  and  not  only  the  partners, 
but  also  other  persons  who  had  knowingly  induced  the  violation 
of  the  contract,  were  held  liable  in  damages.  ^^ 

A  dealer  sold  his  bologna  sausage  business  and  covenanted 
not  to  engage  either  for  himself  or  as  agent  or  servant  in  that 
business  thereafter.  His  wife  and  brother-in-law  later  established 
a  similar  business  of  which  he  acted  as  manager.  Not  only  was 
he  enjoined  from  further  violation  of  his  covenant,  but,  what  is 
of  most  interest  in  this  discussion,  his  wife  and  brother-in-law, 
though  not  bound  by  the  covenant,  were  at  the  same  time  en- 
joined by  the  equity  court  in  New  Jersey  from  causing  him  to 
violate  his  obligation  by  employing  him,  and  holding  him  out  as 
their  agent. ^^ 

§  173.  Position  of  New  York  Courts.  —  While  this  law  in  New 
York  can  hardly  be  considered  as  settled,  the  preponderance  of 
authority,  contrary  to  modern  tendency  elsewhere,  seems  to  favor 
the  view  that  for  inducing  the  determination  or  other  breach  of  a 
contract,  a  third  party  is  liable  "only  when  he  has  been  guilty 
of  unlawful  means."  ^'^  There  has  been  no  recent  pronouncement 
by  the  Court  of  Appeals,  and  possibly  Ashley  v.  Dixon,  48  N.  Y. 
430  (which  held  that  A  was  not  liable  to  B  for  inducing  C  to  sell 
him  real  property  which  he  had,  to  A's  knowledge,  contracted  to 
sell  to  B)  will  some  day  be  distinguished  or  overruled.  A  recent 
decision  in  the  second  department  may  be  cited  in  favor  of  the 
prevailing  rule  that  to  induce  the  violation  of  a  contract,  though 
by  mere  persuasion,  is  ordinarily  actionable.  ^^     The  first  depart- 

-^  Rcujmojid  V.  Yarringlon,  72  H.  W.  Hotchkiss,  J.,  says  at  p.  367:  "The 

800;  02  L.  R.  A.  902;  90  Tex.  443-  gist  of  the  wrong  hcs  in  overpowering 

1903.  or  circumventing  the  freedom  of  will 

"  Fleckenstein   tiros.   Co.   v.   Fleck-  and  the  intent  of  the  one  obhgated  to 

enstein,  06  N.   J.   Eq.   252-1904;  57  perform,  as    distinguished  from  pro- 

Atl.    1025.  curing  him  by  fair  means  to  elect  not 

3"  Jesse  L.  Laskey  Feature  Play  Co.  to  perform." 
V.  Wrn.  Fox  V.  Co.,  93  Misc.  364,  in  "  Warschauser  v.   Brooklyn  Furni- 

which,    however,    a    complaint    was  <wre  Co.,  159  A.  D.  81  (2d  Dcpt.  1913), 

sustained    upon    demurrer,    where   it  in  which,  upon  demurrer,  it  was  held 

was  alleged  that  breach  of  the  con-  actionable,  maliciously  to  induce  or 

tract  wa.s  procured  by  false  represen-  procure  a  master  to  discharge  an  em- 

tations  that  plaintiff  was  not  preparing  ployee,  though  no  fraudulent  means 

and  did  not  intend  to  perform,  and  were  used,  while  it  did  not  appear  what 

that   the   contract   waa  not  binding,  particular  means  of  inducing  the  dis- 


Position  of  New  Yoek  Courts 


353 


ment,  however,  seems  to  have  committed  itself  to  the  contrary 
view  by  the  decisions  cited  in  the  note,  particularly  De  Jong  v. 
Behrman  Co.^^ 


charge  were  employed  by  plaintiff,  it 
was  deemed  sufficient  that  the  com- 
plaint set  forth  "circumstances  show- 
ing an  intentional  and  wilful  act 
calculated  to  cause  damage  to  the 
plaintiff  by  depriving  her  of  her  law- 
ful employment,  done  with  the  un- 
lawful and  unjustifiable  purpose  of 
causing  such  damage  and  loss,  and 
resulting  in  such  damage  and  loss." 
The  court  quotes  from  and  follows 
Walker  v.  Cronin,  107  Mass.  552,  and 
Chipley   v.    Atkinson,    23    Fla,    206. 

3^  Ashley  v.  Dixon,  48  N.  Y.  430,  was 
followed  in  the  similar  case  of  Daly  v. 
Cornwell,  34  A.  D.  27.  Such  cases  as 
Rice  V.  Manley,  66  N.  Y.  82,  where 
fraudulent  or  otherwise  unlawful 
means  were  used,  are  clearly  distin- 
guishable. In  Roseneau  v.  Empire 
Circuit  Co.,  131  A.  D.  429,  it  was 
held  that  a  theatrical  syndicate  was 
not  liable  for  inducing  theatrical 
companies  to  play  only  at  its  houses, 
in  violation  of  an  existing  contract 
with  the  plaintiff.  The  question  was 
again  fairly  presented  and  discussed 
in  De  Jong  v.  Behrman  Co.,  148  A.  D. 
37,  in  which  it  was  held  to  entice 
away  employees  and  induce  them  to 
break  their  contracts  of  service  is  not 
an  actionable  tort,  where  no  unlawful 
means,  such  as  false  representations 
or  intimidations,  are  used.  The  cases, 
it  will  be  observed,  expressly  apply 
the  same  rule  to  contracts  of  service 
as  to  other  contracts,  and  refuse  to 
follow  Lumky  v.  Gye,  2  El.  &  Bl.  216. 
The  Appellate  Division,  in  the  De  Jong 
case  just  referred  to,  clearly  dissented 
from  the  prevailing  rule  in  this  coun- 
try, as  well  as  in  England,  saying:  — 

"This   brings   us   to   the   question 


whether  or  not  this  action  will  he 
for  damages  for  inducing  a  servant  to 
break  his  contract  for  services  with 
his  master.    This  is  a  question  which 
has  been  widely  discussed,  and  upon 
which  there  has  been  much  difference 
of  opinion,  but,  strangely  enough,  it 
has   seldom   arisen   in   this  state  so 
far  as  appears  from  the  reported  cases. 
The    plaintiff   relies   upon   the   well- 
known,  and  often  cited  case  of  Lum- 
ley  V.  G7je,  2  El.  &  Bl.  246.    In  that 
case  one  Wagner,  a  lyric  artist,  had 
contracted  with  plaintiff  to  sing  at 
his   theatre  and  elsewhere  during  a 
certain    time.      Defendant,    without 
using  fraudulent  or  otherwise  illegal 
means,  persuaded  her  to  break  her 
contract.     It  was  held,  not  without 
a    strong   dissent    by    Coleridge,    J., 
that  an  action  would  lie  for  damages. 
It  is  safe  to  say  that  that  case  has 
never    been    fully    accepted    in    this 
country,    and    even    in    England    its 
authority  has  been  much  limited  if  not 
actually  weakened.    Allen  v.   Flood, 
Law  Rep.,  1898,  App.  Cas.  1.     In  so 
far  as  it  was  based  upon  the  ancient 
statutes  of  England  respecting  labor- 
ers and  servants  it  is  clear  that  it  has 
no  application  to  conditions  existing 
in    this    state.      National    Protective 
Association  v.  Cuming,  170  N.  Y.  315. 
It  has  been  held  in  some  jurisdictions, 
and  strongly  denied  in  others,  that 
the  law  gives  a  remedy  for  interfer- 
ence with  contracts  for  service,  which 
it  would  not  give  under  like  circum- 
stances   for   interference    with    other 
contracts.     In  our  opinion,  however, 
no    such    distinction    can    properly 
be  made,   nor  is  sanctioned  by  the 
closer    reasoning.      A    contract    for 


354     Interference  with  a  CoMrETiTOR's  Business,  Etc. 


A  guarantee  insurance  company  which  threatened  cancella- 
tion of  a  policy  which  could  be  canceled  only  on  five  days'  notice, 
unless  the  employer  (the  assured)  discharged  an  employee,  in  an 
action  of  trespass  on  the  case  by  the  discharged  employee  was 
held  liable  in  damages. ^^ 

The  acts  of  a  trade  union  in  inducing  miners  to  strike,  such  as 
passing  resolutions  to  direct  a  strike,  declaring  holidays,  ordering 
men  to  stop  work,  are  acts  inducing  a  breach  of  contract  and  are 
unlawful.  The  union  was  held  to  have  "initiated,"  directed, 
given  orders,  ''so  that  it  is  correct  to  say  that  they  induced  and 
procured  the  workmen  to  break  their  contracts."^* 
services   is   like   any   other   contract      more  than  the  pleader's  conclusions 


in  which  the  parties  assume  mutual 
obligations  one  to  the  other.  In  case 
of  a  breach  by  one  the  other  has  his 
action  for  damages.  If  a  third  party 
is  to  be  lield  liable  for  having  induced 
the  breach  it  must  be  because  he  has 
been  guilty  of  some  wrongdoing, 
amounting  to  a  tort,  whereby  he  had 
deprived  the  aggrieved  party  of  a 
valuable  thing,  to  wit,  the  contract. 
It  seems  to  be  well  settled  as  to  con- 
tracts generally,  and  we  see  no  rea- 
son why  the  same  rule  should  not 
apply  to  contracts  for  service,  that 
interference  by  a  stranger  is  action- 
able only  if  he  has  used  fraudulent  or 
otherwise  wrongful  means  to  induce 
one  party  to  break  the  contract.  That 
such  interference  is  actionable  is  set- 
tled. Rice  v.  ManUy,  66  N.  Y.  82. 
It  is  significant  that  in  the  present 
case  the  defendants  are  charged  with 
the  adoption  of  no  illegal  or  fraudulent 
means  for  enticing  away  plaintiff's 
employees,  and,  except  in  the  case  of 
Suzanne  Partridge,  no  allegation  is 
made  that  any  employee  so  enticed 
away  was  under  contract  for  any 
definite  term.  It  is  true  that  the 
complaint  is  plentifully  besprinkled 
with  allegations  that  defendants  did 
certain  things  'wrongfully  and  mali- 
ciously,' but  these  amount  to  nothing 


from  unalleged  facts.  In  the  absence 
of  any  sufficient  allegation  of  the 
use  by  defendants  of  fraudulent  or 
unlawful  means  to  entice  away  plain- 
tiff's employees,  we  are  of  opinion  that 
the  complaint  fails  to  state  facts 
constituting  a  cause  of  action."  Any 
intimation  inconsistent  with  the  fore- 
going in  the  opinion  of  Bischoff,  J., 
in  American  Law  Book  Co.  v.  Edward 
Thompson  Co.,  41  Misc.  396,  must  be 
considered  as  overruled,  in  the  first 
department  at  least,  by  the  cases 
above  referred  to. 

3'  London    Guarantee,    etc.,    Co.    v. 
Horn,  206  111.  493-1906,  citing  Quinn 
V.    Leathern,    App.    Cas.    495-1901; 
Chambers  v.  Baldwin,   15  S.  W.  57. 
Where  defendant  maliciously  became 
purchaser    instead    of    plaintiff    and 
caused  breach.     Raycroft  v.  Tayntor, 
68  Vt.  219;  Vegelahn  v.  Gunter,  167 
Mass.    92,    opinion    of    Holmes,    J. 
Moran  v.   Dunphy,   177    Mass.  485 
Hollenbeck  v.  Restine,  114  Iowa,  358 
Gove  V.   Condon,   40  L.   R.   A.   382 
Perkins   v.    Pendleton,   90   IMe.    166 
Chipley  v.  Atkinson,  23  Fla.  206. 

^*  South  Wales  Miners'  Fed.  v. 
Glamorgan  Coal  Co.,  App.  Cas.  239- 
49-1905;  Smithies  v.  National  Asso., 
etc.,  L.  R.  1  K.  B.  310-1909. 


Conditional  Contracts  355 

The  Lords  in  deciding  Allen  v.  Flood,^^  considered  that  Allen 
had  no  power  himself  to  call  out  workmen  to  inflict  damage. 
All  he  did  was  to  inform  the  employer  that  the  other  workmen 
would  leave  under  certain  conditions.  Such  at  least  is  the  expla- 
nation of  the  case  given  by  them  in  Quinn  v.  Leathem,^^  where 
they  were  asked  if  Allen  v.  Flood  made  the  boycott  legal.  A 
valuable  article  on  the  New  York  law  as  to  interference  with 
contract,  by  E.  W.  Huffcutt,  is  found  in  18  Harvard  Law  Review, 
423. 

§  174.  Conditional  Contracts — Inducing  Breach  of  Manufac- 
turers' Contracts  with  Retailers. — He  who  sells  to  one  he  is 
bound  by  contract  with  his  vendor  not  to  sell  to,  gives  good 
title  nevertheless;  and  this  is  true  although  the  person  so  buying 
knew  at  the  time  of  purchase  of  the  existence  and  terms  of  the 
contract.  Coke  on  Littleton,  section  360,  states:  ''If  a  man  be 
possessed  of  a  horse,  or  any  other  chattel,  real  or  personal,  and 
give  his  whole  interest  or  property  therein  upon  condition  that  the 
donee  or  vendee  shall  not  alien  the  same,  the  same  is  void  because 
his  whole  interest  and  property  is  out  of  him,  so  as  he  hath  no 
possibility  of  reverter;  and  it  is  against  trade  and  traffic  and  bar- 
gaining and  contracting  between  man  and  man."  Such  condi- 
tional contracts  are  made  with  agents  who  are  granted  exclusive 
license  to  sell  in  a  certain  territory.  These  agents  are  often  met 
by  the  competition  of  some  third  person  who  has  lawfully  pro- 
cured elsewhere  the  goods  which  the  agent  sells.  The  competitor, 
not  having  bought  of  the  manufacturer,  and  so  being  under  no 
contract  as  to  price,  may  sell  as  he  will,  and  may  cut  prices  and 
sell  to  persons  to  whom  the  agent  is  forbidden  to  sell.  There  is 
no  breach  of  covenant  in  such  a  case.  Both  parties  to  the  con- 
tract of  agency  may  be  acting  in  perfect  good  faith,  and  yet  the 
agent's  business  may  be  ruined  by  this  competition.  The  usual 
method  by  which  these  goods  are  obtained  by  those  who  under- 
sell the  authorized  agent,  is  by  inducing  some  one  of  those  under 
contract  with  the  manufacturer  to  keep  up  the  price,  to  sell  at  a 
less  price  than  that  specified  in  these  contracts.  What  is  then  the 
relationship  of  the  manufacturer  to  him  who  has  thus  broken 
his  agreement,  and  to  the  third  person  who  has  bought  the  goods 
and  induced  the  seller  to  break  his  contract? 

These  contracts  often  specify  that  the  buyer  shall  sell  only 
"App.  Cas.  1-1898;  §174.  ^"App.  Cas.  495-1901. 


350    Interference  with  a  Competitor's  Business,  Etc. 

in  certain  specified  places.  For  instance,  the  owner  of  a  well- 
known  spring  of  mineral  water  in  Hungary  had  the  exclusive 
right  to  export  and  sell  the  water  in  Great  Britain  and  America. 
Defendant,  having  applied  to  the  owner  to  purchase  bottled  water, 
and  having  been  refused,  and  notified  of  complainant's  rights, 
jjurchased  in  Germany  bottles  bearing  a  cautionary  notice  that 
the  water  was  not  to  be  exported,  and  sold  them  in  the  United 
States  at  a  lower  price  than  the  complainant's.  The  defendant 
was  not  chargeable  with  unfair  competition  for  so  doing,  and  the 
complainant  was  without  remedy. ^^ 

In  National  Phonograph  Co.,  Ltd.,  v.  Edison-Bell,  etc.,  Co., 
Ltd.,^^  plaintiff  sold  goods  to  wholesale  dealers  under  a  contract 
that  they  should  sell  only  to  dealers  who  had  signed  a  retailers' 
agreement  to  the  effect  that  the  retailers  would  not  sell  at  less 
than  list  prices.  The  defendant  obtained  plaintiff's  goods  from 
one  who  had  signed  this  agreement,  and  defendant  was  one  of 
those  to  whom  retailers  had  agreed  not  to  sell.  Defendant  also 
hired  persons  to  impersonate  independent  dealers  and  so  obtain 
goods  of  plaintiff  for  his  own  use,  and  paid  the  prescribed  price 
through  these  persons.  Held,  that  the  dealings  between  the  de- 
fendant and  the  retail  dealer  did  not  give  any  right  of  action  to 
the  plaintiff,  as  no  actual  contract  between  the  retailer  and  the 
plaintiff  was  shown,  but  the  acts  of  the  defendant  in  inducing  the 
wholesalers  by  fraud  and  deceit  to  sell  in  breach  of  their  contract 

"  Apollinaris  Co.,  Ltd.,  v.  Sdierer,  and  addresses.  This  resulted  in 
27  Fed.  18-1886  (C.  C.  S.  D.  sales  being  made  under  misappre- 
N.  Y.).  hension.  The  makers  were  intention- 
's 1  Ch.  335-1908;  National  Phono-  ally  misled.  Lord  Kennedy  sums  it 
graph  Co.,  Ltd.,  v.  Edison-Bell  Con-  up  thus:  "If  A,  who  knows  that  B, 
soVd  Phonograph  Co.,  Ltd.,  24  T.  L.  the  producer  of  an  article,  has  stip- 
R.  201-1907.  Ell,  a  dealer  bound  by  ulated  in  selling  it  to  C,  the  factor, 
a  conditional  contract  for  sale  of  that  he  shall  not  resell  it  to  A,  pro- 
goods  of  plaintiff,  sold  to  an  agent  cures  by  an  intentional  misrepresen- 
of  the  defendant,  who  was  on  the  tation  to  C  a  sale  to  himself,  he  has 
"suspended  list"  at  trade  discount  committed  toward  B  an  actionable 
prices.  There  was  no  proof  that  the  wrong,  provided  that  B  can  prove  he 
defendants  incited  or  procured  Ell  has  been  thereby  damaged,  although 
to  violate  his  contract.  Nor  was  their  in  the  particular  circumstances  B  may 
conduct  proven  malicious.  There  have  no  cause  of  action  against  C  in 
was  proof  that  agents  of  defendant  respect  of  the  transaction."  Injunc- 
represented  themselves  as  indepen-  tion  as  to  the  agent's  acts  was  granted, 
dent  dealers  and  gave  fictitious  names  but  not  as  to  Ell's  acts. 


Inducing  Breach  of  Contracts,  Etc.  357 

with  plaintiff,  was  an  interference  with  contract,  within  the 
meaning  of  Allen  v.  Flood  ^^  and  Quinn  v.  Leathern J^  Injunction 
and  damages  were  granted. 

The  National  Phonograph  case  differs  from  some  American 
cases  in  that  there  the  wholesaler  did  not  know  when  he  made  the 
objectionable  sales  he  was  breaking  his  contract.  One  of  the 
judges  in  that  case  contended  that  there  was  no  breach  of  the 
contract  because  of  this  fact;  although  he  says  (p.  368):  "If  A, 
who  knows  that  B,  the  producer  of  an  article,  has  stipulated  in 
selling  it  to  C,  the  factor  (or  wholesaler),  that  he  shall  not  resell 
it  to  A,  procures  by  an  intentional  misrepresentation  to  C,  a  sale 
to  himself,  he  has  committed  an  actionable  wrong  (provided  that 
B  can  prove  he  has  been  thereby  damaged),  although  in  the  par- 
ticular circumstances  B  may  have  no  cause  of  action  against  C 
in  respect  of  the  transaction."  In  this  case  it  is  to  be  noted  also 
that  there  is  no  consideration  given  to  the  character  of  the  prop- 
erty of  the  maker  whether  he  be  a  patentee  or  not. 

As  a  general  proposition  there  seems  to  be  no  rule  of  law  or 
equity  which  can  invalidate  the  title  of  one  who  thus  buys  of  one 
who  has  agreed  not  to  sell  on  the  terms  on  which  the  sale  is  made. 
If  one  makes  an  offer  of  purchase  to  a  party  to  such  a  contract, 
without  using  any  fraudulent  representations  and,  through  the 
financial  attractiveness  of  the  offer  he  makes,  induces  the  breach 
of  the  contract,  it  would  seem  there  is  no  ground  on  which  the 
buyer  can  be  enjoined  or  held  responsible  for  interference  with 
contract,  when  there  is  no  particular  property  right  in  the  original 
owner  of  the  goods,  such  as  that  given  by  patent  laws  to  patentees. 

§  175.  Inducing  Breach  of  Contracts  for  Sale  of  Goods  Made 
by  Secret  Process.  —  In  cases  deahng  with  goods  made  bj"-  a 
secret  formula,  equity  will  not  restrain  one  dealer  from  persuading 
another  to  break  a  contract  which  the  latter  has  made  with  the 
manufacturer,  which  contract  provides  that  the  dealer  shall  sell 
only  at  a  price,  and  to  customers  specified  by  the  manufacturer. 
Such  contracts  are  made  frequently  in  the  attempt  to  keep  up 
prices  and  eliminate  competition.  When  such  a  sale  is  made 
violating  a  contract  of  this  sort,  or  if  the  maker  himself  sells  in 
the  agent's  territory,  a  purchaser  acquires  an  absolutely  good 
title  as  p.gainst  the  agent  and  maker,  and  he  may  do  with  the  goods 
as  he  will.    This  is  true,  although  the  buyer  knew  at  the  time,  of 

=»App.  Cas.  1-1898.  «App.  Cas.  495-510-1901. 


358    Interference  with  a  Competitor's  Business,  Etc. 

the  existence  of  a  contract  which  forbade  the  agent  to  sell  to 
him.  The  bar  to  relief  against  such  competition  is  the  good 
title  which  a  buyer  of  personal  property  gets  under  such  cir- 
cumstances/^ 

This  rule  does  not  apply  to  patented  articles,  and  probably 
not  to  copyrighted  articles,  during  the  life  of  the  patent  or  copy- 
right. ^^  The  monopoly  given  by  the  statutes  governing  patents 
and  copyrights  controls  in  such  cases,  and  the  maker  may  sell 
under  such  conditions  as  he  will.  But  the  rule  does  apply  to  goods 
made  by  secret  processes.  There  no  monopoly  exists.  Contracts 
to  limit  alienation  of  personal  property  made  by  such  process 
because  it  is  secret,  are  invalid.  The  product  of  a  secret  process, 
once  sold  by  the  maker,  may  be  dealt  in  by  anyone.  That 
the  method  of  making  it  is  a  secret,  does  not  change  its 
legal  status.  The  Circuit  Court  of  Appeals  has  recently  dis- 
tinguished contracts  dealing  with  a  secret  formula  itself, 
from  those  dealing  with  the  product  of  the  formula,  because 
the  goods  when  ready  for  the  market,  may  be  owned  by  some- 
one quite  distinct  from  the  owner  of  the  formula. '^^  The  court 
says:  ''Contracts  in  respect  of  a  restricted  use  of  the  formula 
are  not  within  the  rule  against  restraint  (of  trade),  because  of 
the  character  of  the  property  right  in  such  a  secret.  There 
can  be  no  unrestricted  use,  before  discovery  by  fair  means,  to 
which  the  owner  does  not  consent,  and  then  only  at  the  expense 
of  the  destruction  of  its  commercial  value  as  a  secret;  but  this  is 
not  the  case  with  contracts  which  affect  only  traffic  in  the  manu- 
factured product  of  the  secret  formula.  Freedom  of  traffic  in 
that  is  consistent  with  its  value,  and  does  not  involve  exposure 
of  the  formula"  (id.  p.  32).  This  case  would  seem  to  hold  that 
there  could  be  no  interference  with  contracts  relating  to  the  prod- 
uct of  a  secret;  but  that  there  could  be  such  interference  with  a 
contract  relating  to  the  secret  itself,  and  that  interference  with 
a  contract  as  to  the  secret  itself  would  be  enjoined.  This  is  the 
general  rule. 

Where  one  communicates  a  secret  formula,  and  contracts  that 
the  parties  shall  enjoy  a  monopoly  of  it  in  a  certain  region  and 

"  Apollinaris    Co.    v.    Scherer,    27  "  See   full   discussion   in  John  D. 

Fed.  18-21-1886  (C.  C.  S.  D.  N.  Y.).  Park  &  Sotis  Co.  v.  Hartman,   153 

"See  Bobbs-Merrill  Co.  v.  Straus,  Fed.  24-1907  (C.  C.  A.  6th  Cir.);  12 

210  U.  S.  339-1907.  L.  R.  A.  N.  S.  135,  note. 


Inducing  Breach"  of  Contracts,  Etc.  359 

that  the  product  of  it  shall  not  be  Sold  below  a  certain  price,  an'H- 
a  third  person  sells  it  in  these  limits,  an  account  will  be  directed."*^ 
One  who  procures  a  wholesaler  or  retailer,  who  is  under  contract 
with  a  maker  to  sell  goods  made  by  secret  process  only  under 
certain  conditions,  to  violate  these  conditions  will  be  enjoined. 
Such  conditions  are  usually  against  selling  below  a  fixed  price, 
or  to  persons  not  nominated  by  the  manufacturer.  It  is  said 
that  the  defendant  is  intentionally  doing  another  a  legal  injury 
by  tempting  and  persuading  him  to  break  a  contract  or  to  commit 
a  breach  of  a  trust,  under  which  the  goods  were  delivered  to  him.^^ 
In  Wells  &  Richardson  Co.  v.  Ahraham,'^^  complainant  was  a 
manufacturer  of  a  proprietary  medicine  which  it  sold  only  -to 
wholesale  dealers,  who  in  turn  agreed  to  sell  only  at  a  fixed  price 
and  only  to  such  retail  dealers  as  had  contracted  with  complain- 
ant to  retail  the  medicine  at  a  stipulated  price.  Defendants  were 
retail  merchants  who  had  not  contracted  with  complainant  at 
all,  but  purchased  from  dealers  who  thus  sold  in  violation  of  their 
agreements  with  complainant.  Defendants  then  sold  at  a  cut 
price.  Held,  that  complainant  was  entitled  to  an  injunction  re- 
straining defendants  from  inducing  any  dealer  to  violate  his 
contract  with  complainants  by  selling  to  defendants.  ''A  is 
intentionally  doing  B  a  legal  injury.  C  intentionally  induces  A 
to  do  the  injury.  He  solicits  that  it  be  done.  He  pays  money  to 
the  doer  of  it,  to  tempt  him  to  do  the  act;  that  is,  A  and  C  unite, 
connive,  agree  to  procure  A  to  break  his  contract,  so  that  C  may 
get  complainant's  goods,  which  the  latter  had  committed  to  A, 
upon  the  trust  that  they  shall  not  be  delivered  to  C  and  others 
similarly  situated.  In  such  an  instance,  the  law  should  have 
sufficient  inherent  integi-ity  to  enable  it  to  lay  fast  hold  of  A  and 
C,  and  stop  both  such  deliberate  breach  of  obligations  and  the 
advantages  that  persons  implicated  in  it  are  gaining.  *  *  * 
No  sane  conscience  can  justify  one  man  inducing  another  to 
betray  a  legal  obligation.  *  *  *  The  very  vital  wrong  is 
that  the  defendants  have  obtained  and  are  obtaining  the  goods 
by  inducing  others,  not  entitled  to  sell  to  them,  to  make  sale  to 
them,  whereby  the  defendants  come  into  possession  by  doing  the 
complainant  a  legal  injury,  a  wrong,  that  makes  such  possession 

"  Fowle   V.   Park,    131    U.   S.   88-      hajn,  146  Fed.  190-1906  (C.  C.  E.  D. 
1889;  33  L.  ed.  67;  9  Sup.  Ct.  658.          N.  Y.);  affirmed  in  149  Fed.  408. 
«  Wells  &  Richardson  Co.  v.  Abra-  "«  146  Fed.  190-1906. 


360    Interference  with  a  Competitor's  Business,  Etc. 

wrongful.  *  *  *  The  law  of  the  land  accords  with  good 
morals."  Thomas,  J.  (pp.  193,  194).  This  language  has  been 
affirmed.^' 

This  decision  is  not  followed  in  John  D.  Park  &  Sons  Co.  v. 
Hartman,'^^  on  the  ground  that  the  validity  of  the  contracts 
involved  was  not  denied,  while  in  the  latter  case  the  contract 
between  maker  of  goods,  the  owner  of  the  secret,  and  the  whole- 
saler was  held  invalid  on  the  ground  that  there  is  nothing  in  the 
character  of  a  trade  secret  similar  to  the  right  of  monopoly  granted 
to  the  owner  of  a  patent,  hence  the  owner  of  a  secret  process  can- 
not, by  contract,  prevent  his  vendee  from  obtaining  absolute  title. 

In  Gar  si  v.  Charles, ^^  plaintiff  was  a  manufacturer  of  a  proprie- 
tary medicine  which  he  sold  only  to  retail  druggists  under  con- 
tracts by  which  they  agreed  not  to  sell  it  at  less  than  a  stipulated 
price.  Defendant,  a  retail  druggist,  knowing  of  the  terms  on 
which  plaintiff  sold  his  medicine,  procured  a  third  person  to  buy 
a  quantity  on  those  terms,  and  then  to  turn  it  over  to  defendant 
at  cost,  whereupon  defendant  advertised  and  sold  the  article  at 
a  cut  price.  Plaintiff  was  granted  an  injunction  restraining  de- 
fendant from  selling  such  medicine  as  he  had  already  procured, 
except  at  the  regular  price,  and  enjoining  him  also  from  there- 
after inducing  other  persons  to  purchase  from  the  plaintiff,  and 
to  resell  to  the  defendant  in  violation  of  their  contracts  with 
plaintiff. 

In  Wells  &  Richardson  Co.  v.  Abraham  ^°  the  defendants  ob- 
literated or  mutilated  the  marks  upon  packages  before  offering 
complainant's  goods  for  sale,  and  it  was  held  that  this  act  consti- 
tuted sufficient  evidence  of  connivance  and  participation  in  the 
breach  of  the  contract. 

Other  similar  cases,  also  involving  the  sale  of  proprietary  med- 
icines, are  Doctor  Miles  Medical  Co.  v.  Piatt  ^^  and  Doctor  Miles 
Medical  Co.  v.  Jayne  Drug  Co.^^  In  some  similar  cases  the  ques- 
tion was  raised  whether  the  contracts  were  not  invalid  as  in  re- 
straint of  trade,  but  this  question  is  not  considered  to  be  within 
the  scope  of  this  book.     A  somewhat  analogous  case  was  Bobbs- 

«  149  Fed.  408-1906  (C.  C.  A.  2d  ''>  146  Fed.    190-1906;  affirmed   in 

Cir.).  149  Fed.  408. 

«153  Fed.  24-1907;  12  L.  R.  A.  "142  Fed.  606-1906  (C.  C.  111.). 

N.  S.  135,  note.  "  149      Fed.     838-1900      (C.     G. 

«  187  Mass.  144-1905;  72  N.  E.  839.  Mass.). 


Interference  with  Prospective  Contracts         361 

Merrill  Co.  v.  Straus, ^^  which  is  mentioned  below;  but  as  it  was 
found  there  that  no  contract  existed,  so  that  there  was  no  inducing 
of  the  violation  of  any  contract,  the  case  is  hardly  an  authority, 
though  valuable  for  the  discussion  in  the  opinion. 

Where  the  contract  is  personal  in  character  to  a  greater  extent 
than  in  the  cases  just  discussed,  an  injunction  has  been  granted. 
In  Sperry  &  Hutchinson  Co.  v.  Mechanics'  Clothing  Co.^'^  the  com- 
plainant was  engaged  in  the  business  of  selling  and  redeeming 
trading  stamps  which  it  sold  to  merchants  under  a  special  con- 
tract by  which  the  purchasers  agreed  not  to  dispose  of  them 
except  in  the  regular  course  of  retail  trade.  The  defendants 
acquired  a  quantity  of  stamps  from  merchants  who  disposed  of 
them  to  the  defendants  in  violation  of  their  special  contracts 
with  the  complainants.  The  defendants  were  reselling  these 
stamps  to  other  merchants  who  were  already  under  contract  to 
purchase  only  from  the  complainants,  and  were  enjoined.  Speak- 
ing of  this  decision  and  of  the  railroad  ticket  cases,  Lurton,  J.,  in 
John  D.  Park  &  Sons  Co.  v.  Hartman,'-"''  says:  These  cases  ''rest 
upon  the  peculiar  character  of  the  property  rights  involved. 
Neither  of  these  cases  concern  the  buying  and  selling  of  articles 
of  general  commerce,  and  both  relate  to  things  in  the  nature  of 
contracts  personal  in  character,  and  not  to  things  which  can 
ever  become  the  subject  of  general  trade  and  traffic." 
§  176.  Interference  with  Proposed  or  Prospective  Contracts. — 
It  may  be  considered  now  as  settled  that  to  interfere  with  a 
man's  trade,  without  justification,  by  preventing  another  from 
entering  into  a  contract  with  him  which  it  is  reasonably  certain 
would  have  been  made  but  for  the  interference,  is  actionable. 
In  a  recent  case,  Lewis  v.  Bloede,  202  Fed.  7  (C.  C.  A.)  the  ques- 
tion was  considered  with  care,  and  the  conclusion  was  to  that 
effect.  ^^ 

"  147  Fed.  15-1906  (C.  C.  A.  2d  executory  contract,  the  question  nat- 

Cir.).  urally    arose    whether    the    principle 

5"  128  Fed.  800-1904  (C.  C.  R.  I.),  extended  to  a  case  in  which  a  third 

55 153  Fed.  24-31-1907  (C.  C.  A.  party,  with  like  motive  and  without 

6th  Cir.) ;  12  L.  R.  A.  N.  S.  135,  note,  lawful    excuse,    by    his    interference 

56  The  court  says  at  p.  16:  —  prevented    one   from    entering    into, 

"It  having   been  settled   that  an  or  making,  a  contract.     The  answer 

action,  as  for  a  tort,  would  lie  for  a  to   this  question  is  dependent  upon 

malicious  —  that  is  wrongful  —  inter-  the  answer  to  another,  which  lies  at 

ference  with  the  performance  of  an  the   threshold   of   the   inquiry:   Does 


302     Interference  with  a  Competitor's  Business,  Etc. 


This  distinction,  however,  is  to  be  observed,  namely,  that 
interference  with  a  fixed  contract  right  is  actionable,  even  though 
motived  by  trade  competition;  whereas  interference  with  a  con- 


the  right  to  enter  into  or  make  a  con- 
tract come  within  the  definition  of  a 
legal  right,  the  wrongful  interference 
with  which  is  actionable?  It  is  diffi- 
cult to  say,  in  many  cases,  at  what 
stage  of  a  negotiation  the  condition 
has  arisen  when  it  can  be  said  that  two 
persons  would,  but  for  the  interfer- 
ence of  a  third  party,  have  entered 
into  contract  relations.  If  A  make 
a  definite  proposal  to  B  to  enter  into 
a  contract,  the  character,  terms,  etc., 
of  which  are  sufficiently  definite  to  be 
capable  of  acceptance,  and,  while 
B  is  negotiating,  or  after  he  has  de- 
termined to  accept  the  proposal,  C 
maliciously  interferes  and  prevents 
the  acceptance  on  the  part  of  B.,  or 
procures  a  withdrawal  of  the  proposi- 
tion by  A.,  by  reason  whereof  loss  is 
sustained,  can  it  be  said  that  the  party 
who  is  injured  by  such  interference 
has  sustained  no  legal  wrong,  and  that 
by  reason  thereof  has  sustained  no  in- 
jury —  that  is,  loss?  Is  there  not  in 
such  case  damnum  el  injuria,  which 
constitute  the  elements  of  an  action- 
able wrong?  Assuming,  jyTO  hac  vice, 
that  the  facts  averred  in  plaintiff's 
declaration  are  true,  is  it  not  clear 
that  the  Chemical  Company,  being  pre- 
pared to  comply  with  the  terms  of  the 
government's  proposal  to  buy  the  ink, 
which  was  the  subject-matter  of  the 
proposal,  and,  accepting  the  invita- 
tion of  the  government  to  bid  for  the 
contract,  by  furnishing  the  sample  and 
stating  the  price,  it  secured,  over 
other  bidders,  a  status  in  the  nego- 
tiation which,  but  for  defendant's 
interference,  would  have  resulted  in 
its  making  the  contract  by  the  per- 
formance of  which  it  would  have  made 


a  profit,  why  did  it  not  have  a  status, 
the  unlawful  interference  with  which 
by  defendants  was  a  wrong  for  which 
he  is  entitled  to  a  remedy?  It  is  true 
that  the  right  is  more  difficult  to  es- 
tablish— requiring  another  link  in  the 
process  of  proof  —  than  where  the  con- 
tract has  been  entered  into.  When  the 
parties  have  entered  into  a  contract, 
the  terms  of  which  are  fixed,  the 
plaintiff  is  only  required  to  show  the 
malicious  interference  and  the  dam- 
age proximately  resulting;  whereas, 
if  the  ground  of  complaint  is  that  he 
was  about  to  make  a  contract,  he  is 
required  to  go  further  and  show  that 
he  was  not  only  '  about  to,'  but  would, 
but  for  the  mali«ious  interference  of 
defendants,  have  entered  into  the 
contract,  etc.  While  there  are  but 
few  adjudged  cases  throwing  light 
upon  the  subject,  we  are  not  without 
authority  to  sustain  the  ruling  of  the 
court  below  in  overruling  the  demur- 
rer. In  Am.  &  Eng.  Enc,  vol.  16, 
page  1114,  it  is  said  that: 

'According  to  some  authorities,  an 
actionable  interference  with  contract 
relations  is  not  confined  to  cases  where 
the  contraot  is  binding  and  valid. 
It  is  actionable  likewise  to  mahciously 
induce  the  termination  of  a  contract, 
terminable  at  will,  or  to  prevent  the 
formation  of  contracts  which,  in  the 
natural  course  and  but  for  such  inter- 
ference, would  have  been  formed.' 

For  this  statement  of  the  law  the 
author  cites  Walker  v.  Cronin,  supra. 
In  that  case  the  declaration  alleged 
that  defendant  did  unlawfully,  etc., 
molest  and  hinder  the  plaintiffs  from 
carrying  on  their  business  of  manu- 
facture  and   sale   of  shoes — willfully 


Interference  with  Prospective  Contracts 


363 


tract  in  course  of  negotiation,  without  the  use  of  illegal  means, 
may  be  justified  by  the  motive  of  the  legitimate  interest,  as  trade 
competitor  or  otherwise  of  the  one  interfering." 
Analogous  to  an  interference  to  prevent  the  formation  of  a 


persuaded  a  large  number  of  persons 
who  were  in  the  employment  of  plain- 
tiffs, and  others,  who  were  about  to 
enter  into  their  employment,  to  aban- 
don, etc.  It  may  be  suggested  that 
the  question  presented  here  did  not 
necessarily  arise  because  the  declara- 
tion was  good  without  reference  to  it. 
The  language  of  Wells,  J.,  however, 
indicates  that  he  was  making  no  such 
distinction.  After  citing  authorities, 
he  says: 

'  In  all  these  cases,  the  damage  for 
which  the  recovery  is  had  is,  not  the 
loss  of  the  value  of  actual  contracts 
by  reason  of  their  nonfulfilment,  but 
the  loss  of  advantages  either  of  prop- 
erty or  personal  benefit,  which,  but 
for  such  interference,  the  plaintiff 
would  have  been  able  to  obtain  or 
enjoy.' 

The  language  of  the  judge  in 
Templeton  v.  Russell,  1  Q.  B.  728 
[1893],  clearly  indicates  that  the  right 
of  action  accrues  to  the  injured  party, 
not  only  for  maliciously '  inducing  per- 
sons to  break  contracts  already  entered 
into,  *  *  *  but  for  inducing  per- 
sons not  to  enter  into  contracts  with 
the  plaintiff '  —  the  reason  given  be- 
ing: 

'That  there  was  the  same  wrong- 
ful intent  in  both  cases;  wrongful, 
because  malicious.  There  was  the 
same  kind  of  injury  to  the  plaintiff. 
It  seems  rather  a  fine  distinction  to 
say  that  where  a  defendant  maliciously 
induces  a  person  not  to  carry  out  a 
contract  already  made  with  the  plain- 
tiff, and  so  injure  the  plaintiff,  it  is 
actionable,  but  where  he  injures  the 
plaintiff,  by  maliciously  preventing  a 


person  from  entering  into  a  contract 
which  he  would  otherwise  have  en- 
tered into,  it  is  not  actionable.'  " 

The  court  also  refer  to  Angle  v. 
Chicago  &c.  Ry.,  151  U.  S.  1,  and  other 
cases. 

In  Krighaum  v.  Sbarbaro,  23  Cal. 
App.  427  (138  Pac,  364)  it  was  simi- 
larly held  that  interference  with  a 
contract  for  real  estate  under  negotia- 
tion was  actionable,  if  the  contract 
would  have  been  made  but  for  the 
interference.  There,  however,  the  in- 
terference was  by  means  of  intimida- 
tion and  coercion. 

See  also  Joyce  v.  Gt.  Northern  Ry. 
Co.,  100  Minn.  225,  229,  and  cases 
there  cited. 

"In  Leivis  v.  Bloede,  202  Fed.  7, 
fraudulent  means  were  used  by  a 
trade  competitor.  Otherwise  it  seems 
that  his  conduct  would  not  have  been 
actionable.  There  seems  no  ground, 
either  in  reason,  or  in  the  authority 
of  judicial  precedent,  for  differentiat- 
ing the  case  of  interfering  to  prevent 
the  formation  of  a  particular  contem- 
plated contract  from  the  general  case 
of  interfering  with  another's  business 
or  employment,  in  which  (always  as- 
suming that  the  means  used  are  not  in 
themselves  unlawful),  the  rule  is,  as 
stated  in  Beekman  v.  Marsters,  195 
Mass.  205,  212:  "When  the  plaintiff 
comes  into  court  to  get  protection  from 
interference  with  his  right  of  possible 
contracts,  that  is,  of  his  right  to 
pursue  his  business,  acts  of  inter- 
ference are  justified  when  done  by  a 
defendant  for  the  purpose  of  further- 
ing his  (the  defendant's)  interests 
as  a  competitor." 


364    Interference  with  a  Competitor's  Business,  Etc. 

contract  is  an  interference  to  prevent  the  taking  of  action  favor- 
able to  plaintiff's  interest.  For  example,  defendant,  by  deceit, 
induced  A  to  reject  a  machine  made  by  plaintiff,  under  a  contract 
by  which  A  might  reject  the  machine  if  not  satisfied  with  it.  He 
was  held  liable,  even  without  direct  proof  that  A  would  other- 
wise have  accepted  the  machine.  ^^ 

§  177.  What  Interference  with  Another's  Business  in  General 
is  Legitimate. —  Some  methods  of  bringing  pressure  to  bear  are 
quite  legitimate,  though  the  result  may  be  to  divert  a  rival's 
trade.  Under  certain  circumstances  one  may  have  a  perfect 
right  to  threaten  a  class  of  persons  with  withdrawal  of  patronage, 
or  with  some  other  disadvantage,  if  they  deal  with  a  rival.  The 
House  of  Lords  has  held  that  it  is  not  unlawful  to  outbid  a  compet- 
itor in  rates. 

In  the  case  of  Mogul  SS.  Co.,  Ltd.,  v.  McGregor,  Gow  &  Co.,^^ 
an  association  of  shipowners,  to  secure  to  themselves  a  certain 
carrying  trade,  agreed  that  the  number  of  ships  and  rate  of 
freight  should  be  regulated  by  agreement  between  themselves, 
and  offered  a  rebate  to  shippers  who  would  agree  to  ship  only  by 
their  vessels.  Other  shipowners  not  belonging  to  the  defendant's 
association  sent  ships  to  load  at  a  port  covered  by  the  agreement, 
and  defendants  sent  extra  vessels  to  the  same  port,  underbid 
plaintiffs  for  freight,  reduced  rates  so  low  that  plaintiffs  could  not 
get  a  remunerative  rate,  threatened  to  dismiss  certain  of  their 
agents  if  they  loaded  plaintiffs'  vessels,  and  notified  shippers 
that  they  would  not  receive  the  usual  rebate  if  they  shipped  by 
plaintiffs'  ships.  The  defendants  were  held  not  liable  in  an  action 
for  damages,  for  the  court  considered  they  had  been  actuated  by 
the  lawful  purpose  of  increasing  their  own  trade  and  profits,  and 
had  used  no  unlawful  means. 

A  retail  lumber  dealers'  association  agreed  not  to  deal  with 
any  wholesale  dealer  who  sold  direct  to  consumers.  It  was 
the  duty  of  the  secretary  to  report  all  such  sales  to  the  members 
of  the  association.  A  member  having  sold  to  consumers,  the 
secretary  imposed  the  fines  fixed  by  the  rules  of  the  association 
and  threatened,  if  they  were  not  paid,  to  report  the  transactions 
to  all  the  members  of  the  association.  The  member  then  brought 
action  for  an  injunction  forbidding  the  giving  of  the  proposed  no- 

^^^  Morgan   v.   Andrews,    107   Midi.  '^  App.  Cas.  25-1892. 

33-1895. 


What  Interference  Is  Legitimate 


365 


tice  and  forbidding  the  defendants  to  combine  to  hinder  or  Hmit 
plaintiff's  sales.  An  injunction  was  granted,  but  on  appeal  was  dis- 
solved ;  the  court  holding  that  any  man  might  refuse  to  deal  with 
any  other  man  or  class  of  men,  and  that  any  number  of  men 
might  agree  to  exercise  such  right  jointly. '^° 

An  ice  dealer  was  coerced  by  the  threats  of  defendant,  a  manu- 
facturer of  ice,  that  the  dealer's  supply  of  ice  would  be  cut  off,  to 
its  great  injury,  unless  the  dealer  broke  its  contract  to  furnish 
ice  to  a  customer.     This  was  held  actionable." 

Similarly,  plaintiff,  a  butcher,  was  held  to  be  entitled  to  dam- 
ages against  cattle  dealers  who,  without  justifying  reasons,  had 
combined  to  refuse  to  sell  to  plaintiff  and  to  induce  others  so  to 
refuse.  The  principle  was  applied  that  the  right  to  refuse  to  deal 
with  another,  even  from  motives  of  prejudice  or  malice,  does  not 
extend  to  the  inducing  of  others  not  to  deal  with  him.®^ 

However,  the  cases  are  not  wholly  in  harmony,  and  combina- 
tions to  interfere  with  the  free  market  of  others  have  repeatedly 
been  held  to  be  justified  by  the  motive  of  trade  competition. 
Instances  are  given  in  the  note.^^ 


60  Bohn  Mfg.  Co.  v.  Hollis,  54  Minn. 
223-1893;  55  N.  W.  1119;  21  L.  R.  A. 
337.  But  see  Huskie  v.  Griffin,  75 
N.  H.  345,  in  which  this  case  is  dis- 
approved. 

81  Sunwalt  Ice  Co.  v.  Knickerbocker 
Ice  Co.,  114  Md.  403. 

«2  Delz  V.  Winfree,  80  Tex.  400-1891. 
Other  cases  in  which  the  business 
interest  sought  to  be  subserved  were 
not  deemed  to  justify  the  means  used, 
are  Knickerbocker  Ice  Co.  v.  Gardiner 
Dairy  Co.,  107  Md.  556  (16  L.  R.  A. 
N.  S.  746)  in  which  defendant,  a  man- 
ufacturer, threatened  to  deprive  a 
jobber  of  the  opportunity  to  handle 
his  goods  unless  he  should  break  his 
contract  to  supply  goods  to  the  plain- 
tiff. He  was  held  Uable.  Klingcl's 
Pharmacy  v.  Sharpe  &  Doelune,  104 
Md.  218  (7  L.  R.  A.  N.  S.  976). 
There  merchants  combined  to  keep 
up  a  scale  of  prices,  agreeing  to  refuse 
to  sell  to  dealers  who  would  not  ad- 


here to  such  prices  and  threatening 
to  boycott  those  seUing  to  such  deal- 
ers, hekl  hable.  In  Ertz  v.  Produce 
Exchange  of  Minneapolis,  79  Minn. 
140-1900,  defendants  agreed  with  each 
other  and  with  others  to  transact  no 
business  with  plaintiff,  a  commission 
merchant  in  the  same  Une  of  business 
with  themselves,  and  thereby  ruined 
his  business.  In  the  absence  of  justi- 
fication, held  actionable,  on  demurrer. 
The  court  said:  "One  man  singly, 
or  any  number  of  men  jointly,  having 
no  legitimate  interests  to  protect, 
may  not  lawfully  ruin  the  business  of 
another  by  maUciously  inducing  his 
patrons  and  third  parties  not  to  deal 
with  him."  Bohn  Mfg.  Co.  v.  Hollis, 
54  Minn.  223,  was  distinguished. 

63  In  Orr  v.  Home  Mutual  Ins.  Co., 
12  La.  Ann.  255-1857,  insurance  com- 
panies which,  in  order  to  prevent 
plaintiff's  appointment  (as  master 
of  a  steamboat)  agree,  though  mall- 


3G6    Interference  with  a  Competitor's  Business,  Etc. 


It  is  lawful,  according  to  the  Texas  Court,  for  an  employer  of 
laborers  who  also  kept  a  store,  to  forbid  his  ifteftr  on  the  pain  of 
discharge  to  trade  at  a  store  kept  by  another.  In  s6'  4oing  he  is'' 
merely  seeking  to  build  Up  his  own  business  to  a  certain  bA^nt 
at  the  expense  of  the  other  storekeeper.^'* 

So  a  landlord  may  induce  or  influence  his  tenants  not  to  take 
their  electric  light  from  a  particular  lighting  company.  It  was 
considered  that  the  right  of  the  lighting  company  to  sell  its  current 
to  those  desiring  it  could  be  interfered  with  by  one  having  an 
equal  or  superior  right,  in  this  case  the  landlord.^^ 

And  so  in  general,  where  the  relations  of  one  person  toward 
others,  as,  for  example,  school  authorities  to  pupils,  justify  the 
exercise  of  a  certain  control  over  their  action,  a  wide  discretion 
is  permitted,  and  if  it  is  exercised  in  good  faith  there  will,  in 
general,  be  no  liability  to  one  with  whom  those  under  authority 
have  been  forbidden  to  deal.^® 


ciously  and  without  cause,  that  they 
would  insure  no  boat  on  which  he 
should  be  employed,  were  held  not 
to  be  liable  in  damages.  To  the  same 
effect  was  Hunt  v.  Simonds,  19  Mo. 
583.  It  may  perhaps  be  doubted 
whether  these  decisions  would  be 
followed  now.  In  Macauley  Bros.  v. 
Tierney,  19  R.  I.  255-1895,  competi- 
tion in  business  was  held  to  justify 
an  association  of  master  plumbers 
in  inducing  wholesale  dealers  in  sup- 
plies not  to  sell  to  plumbers  not  be- 
longing to  the  association,  by  threaten- 
ing that  if  they  did  so  they  would 
lose  the  patronage  of  the  members 
of  the  association.  This  decision 
seems  in  line  with  approved  authori- 
ties. So  in  Whitwell  v.  Continental 
Tobacco  Co.,  125  Fed.  454,  it  was  held 
not  actionable  for  a  manufacturer  to 
refuse  to  sell  to  one  who  would  not 
agree  to  trade  exclusively  with  him. 

^*  Robinson  v.  Texas  Pine  Lands 
Assn.,  40  S.  W.  843-1897  (Tex.  C. 
C.  A.). 

"  People's  Land  &  Mfg.  Co.  v. 
Beyer,  161  Wis.  349;  154  N.  W.  382. 


«6  In  Gott  v.  Berea  College,  156  Ky5 
376,  defendant  promulgated  and  en- 
forced a  rule  forbidding  its  students 
to  visit  restaurants  or  place  of  amuse- 
ment not  controlled  by  it.  Plaintiff 
kept  a  restaurant  near  the  college, 
and  its  business  was  injured  by  the 
enforcement  of  this  rule.  Held  that 
the  rule  was  reasonable,  and  that 
plaintiff  had  no  remedy.  So  in  Gueth- 
ler  V.  Altman,  26  Ind.  App.  587,  it 
was  held  not  actionable  for  members 
of  a  school  board  and  a  teacher  to 
injure  merchants'  trade  by  diverting 
pupils  by  persuasion  and  tlireats.  In 
McKee  v.  Hughes,  133  Tenn.  455; 
181  S.  "W.  930-1916.  Defendants, 
residents  of  a  town,  petitioned  its 
authorities  to  revoke  the  license  of 
plaintiff  as  a  merchant,  on  the  ground 
that  his  store  was  a  pubUc  nuisance; 
the  petition  was  granted  and  the 
store  closed.  Defendants  had  acted 
in  good  faith,  and  had  some  justifica- 
tion in  the  facts.  Held,  no  liabihty. 
In  Brooks  v.  Ingraham,  186  Ala. 
106;  65  So.  138-1914,  it  was  held  the 
proprietor   of   a   health  resort   could 


Tortious  iNTERFERExNeE  with  Another's  Business    367 

But  this  control  over  dependents,  such  as  employees,  pupils, 
etc.,  must  not  be  abused.  It  must  be  exercised  in  strict  good 
faith.*^ 

§  178.  Tortious  Interference  with  Another's  Business  Gener- 
ally. —  There  are  many  ways,  other  than  by  interference  with 
contract,  of  harassing,  interfering  with,  and  obstructing  a  competi- 
tor in  such  a  manner  as  to  amount  to  unfair  competition,  in  the 
broadest  sense  of  the  term.  The  business  of  another  may  be  un- 
lawfully obtained  by  hara^ing  his  customers  and  salesmen,  just 
as  effectively  as  by  passing  off  his  goods  as  those  of  another. ^^ 
Certain  of  these  methods  are  mentioned  below. 

A  hotel  keeper  made  a  contract  with  B,  a  hack  driver,  to  have 
him  meet  trains  and  carry  passengers  to  his  hotel.  On  the  termi- 
nation of  the  contract  with  B  a  similar  one  was  made  with  M, 
but  B  continued  to  use  the  name  ^'Revere  House"  on  his  cabs 
and  carriages.    On  suit  brought  by  M,  B  was  enjoined.^^ 

In  Dauis  v.  New  England  Ry,  Pub.  Co.,  203  Mass.  470-1909, 
(a  case  presented  by  demurrer)  defendant  corporation  published 
a  directory  of  local  expresses,  and  intentionally  omitted  plaintiff 
therefrom,  although  requested  to  include  his  name,  being  induced 
to  do  so  by  the  false  statements  and  threats  of  certain  individuals, 

without  incurring  liability,  announce  in   any   ca^e   a   particular   physician 

that  excursionists  would  not  be  ad-  was  held  actionable,  where  the  cir- 

mitted  to  the  grounds  even  though  this  cumstances  justified   only  a  caution 

resulted  in  loss  to  plaintiff,  who  had  against  employing  except  in  emergency 
organized  a  railway  excursion  and  had  ^  cases  any  phj^sician  but  those  desig- 

spent   money   in   advertising   it   and  nated.    In  a  recent  and  well-considered 

otherwise.  case,   Button  v.   Walters,   132  Tenn. 

"  In  Graham  v.  St.  Charles  S.  R.  Co.,  527,  the  president  of  an  institution, 

47  La.  Ann.  214-1895,  it  was  held  to  gratify   a  pereonal   grievance,  by 

(on  demurrer)   that  to   forbid   one's  persuasion  and  threats  diverted  stu- 

employees,  on  pain  of  discharge,  to  dents  from  plaintiff's  boarding  house, 

deal  with  a  merchant,  and  thus  injure  He  was  held  liable, 

his  business,  in  the  absence  of  justi-  ^^  Sperry    -dfe     Hutchinson    Co.     v. 

fication,   was  actionable.     Wesley   v.  Louis   Weber   &   Co.,   161   Fed.  219- 

Native  Lumber  Co.,  97  Miss.  814-1910,  1908  (C.  C.  111.)-    Complainant  held 

held  it  actionable,  for  defendant,  for  entitled  to  injunction  to  prevent  de- 

the  purpose  of  injuring  a  merchant's  fendant  from  int^^rfering  in  its  busi- 

business,  to  warn  defendant's  employ-  ness  of  issuing  trading  stamps  by  in- 

ees  not  to  deal  with  him,  on  pain  of  ducing    the    violation    of    contracts 

dismissal.     In  Peek  v.  Northern  Pac.  with  it. 

Ry.  Co.,  51  Mont.  295;  152  Pac.  421-  <^' Marsh  v.  Billings,,  7  Cush.  322- 

1915,  forbidding  employees  to  employ  1851. 


308    Interference  with  a  Competitor's  Business,  Etc. 

competitors  of  plaintiiT,  who  were  joined  as  defendants.  Plain- 
tiff was  held  to  be  entitled  to  injunction.^^" 

§  179.  Interference  with  Salesmen  of  a  Competitor. —  In 
Evenson  v.  Spaulding/^  8i)aulding  manufactured  buggies  and 
wagons  in  Iowa  and  sold  them,  through  itinerant  salesmen,  to 
farmers  and  others  in  the  state  of  Washington.  A  voluntary 
association,  composed  principally  of  dealers  in  hardware  and 
farming  implements  in  the  state  of  Washington,  existed,  the 
object  of  which  was  to  induce  farmers  and  others  to  limit  their 
trade  to  dealers  within  the  state.  This  association  employed 
agents  to  follow  closely  Spaulding's  salesmen,  to  interrupt  their 
conversations  with  farmers,  and  dissuade  the  latter,  by  false 
statements  and  otherwise,  from  buying  Spaulding's  goods,  and 
in  various  ways  to  intimidate  and  interfere  with  the  salesmen. 
The  agents  of  the  association  very  rarely  offered  any  buggies  or 
wagons  for  sale;  and  hardly  any  of  the  members  of  the  association 
dealt  in  buggies.  This  was  held  an  unwarranted  attempt  to 
destroy  complainant's  business,  and  an  injunction  pendente  lite 
was  granted. 

§  180.  Interference  by  False  Representations  and  Threats. — ■ 
An  injunction  was  issued  against  the  Standard  Oil  Co.  in  1904 
because  of  very  similar  conduct  on  its  part.^^  Its  agents  at- 
tempted to  ruin  the  business  of  one  Doyle  by  making  false  repre- 
sentations to  his  customers,  and  by  threats  and  intimidation. 
It  also  harassed  his  employees  by  following  and  interfering  with 
them,  and  offering  his  customers  oil  at  a  lower  rate,  or  for  nothing. 

69"  "The  ground  on  which  the  plain-  ing,  to  the  plaintiff's  injury.  *  *  * 
tiff  seeks  relief  is  not  that  he  has  a  The  direct  effect  of  the  false  state- 
right  to  compel  the  defendants  or  ment  is  to  point  those  who  want  the 
either  of  them  to  do  anything  for  his  services  of  an  express  company  to 
benefit,  but  that  he  has  a  right  to  have  other  companies  and  to  divert  them 
them  refrain  from  intentionally  doing  from  the  plaintiff."  He  adds  that 
anything,  without  legal  justification,  "the  gist  of  the  plaintiff's  action  is 
to  his  injury.  The  defendant  cor-  the  wrong  done  him  by  intentionally 
poration  professes  to  give  the  public  turning  away  from  him  those  who 
a  full  hst  of  all  the  reputable  ex-  would  otherwise  do  business  with 
press    companies    doing    business    in  him." 

Boston.     While  it  does  not  say   in  '» 150  Fed.  517-1907  (C.  C.  A.  9th 

express  words  that  the  list  is  complete,  Cir.) ;  9  L.  R.  A.  N.  S.  904,  note, 

that  is  the  meaning  which  the  publi-  "  Standard  Oil  Co.   v.   Doyle,    118 

cation  is  intended  to  convey  and  does  Ky.  662-1904;  82  S.  W.  271. 
convey.    Its  list  is  false  and  mislead- 


Bringing  a  Multiplicity  of  Suits  369 

So  also  a  preliminary  injunction  has  been  granted  restraining 
persons  who  threatened  complainant's  booking  agents  with  loss 
of  business  controlled  by  defendant  if  they  continued  to  sell 
complainant's  tickets.'^^ 

Intimidating  customers,  as  by  a  show  of  violence,  such  as 
firing  cannon,  has  been  held  actionable.  In  Tarleton  v.  M'Gaw- 
leyj^  an  action  was  allowed  against  a  rival  trader  who,  by  firing 
cannon,  had  frightened  away  natives  on  the  African  coast,  and 
thus  prevented  plaintiff  from  trading  with  them.  Intimidation 
by  unjustified  threats  is  actionable.^^ 

§  181.  Interference  by  Bringing  a  Multiplicity  of  Suits. — 
The  bringing  of  a  multiplicity  of  suits,  started  not  in  good  faith 
but  for  the  purpose  of  deterring  the  public  from  purchasing  from 
a  rival  and  of  ruining  his  trade,  has  been  enjoined  in  Wisconsin. 
Where  a  large  number  of  infringement  suits  were  brought,  the 
prosecution  of  them  was  restrained  until  the  questior^s  involved 
had  been  determined  in  the  principal  suit,  the  object  of  the  mul- 
tiplicity of  suits  being  found  to  be  to  harass  a  rival  manufacturer 
and  destroy  his  business.  "Instances  are  not  wanting,"  says 
Quarles,  D.  J.,  ''where  patentees  make  illicit  use  of  the  courts 
as  instrumentalities  of  oppression:  bring  a  multiplicity  of  suits, 
purposely  scattered  through  the  circuits,  not  for  the  honest 
purpose  of  securing  an  adjudication  in  support  of  the  patent,  but 
to  crush  a  rival  manufacturer  by  creating  a  stampede  among  his 
customers :  alarming  them  by  circulars  breathing  threats  of  prose- 
cution, denouncing  the  product  of  the  rival  concern  as  an  infring- 
ing device,  at  the  same  time  taking  no  step  to  bring  any  of  the 
numerous  suits  to  final  hearing."  ^^" 

§  182.  Simulated  Competition.  —  The  motive  of  trade  compe- 
tition, set  up  in  justification  of  acts  causing  injury  to  plaintiff's 
business,  may  be  subjected  to  the  test  of  good  faith.  Some 
legitimate  benefit  to  defendant  (other  than  the  gratification  of 
spite  or  vindictiveness)  must  have  been  contemplated.  The  lead- 
ing case  upon  this  point  is  Tuttle  v.  Buck,  107  Minn.  145-1900. 

'2  Lloyd  Sahaudo  v.  Cubicciotti,  159  industrial  dispute  cases,  e.  g.,  Kolley 

Fed.  191-1908  (C.  C.  Pa.).  v.  Robinson,  187  Fed.  415. 

"  Peake  N.   P.  205-1793.  ''^'^  Commercial  Acetylene  Co.  v.  Avery 

^*  Virtue   v.   Creamery   P.   M.   Co.,  Portable  Ltg.   Co.,   152  Fed.  642-45- 

123   Minn.    17.     Other  examples   of  1906  (C.  C.  Wis.), 
actionable  intimidation  are  found  in 


370    Interference  with  a  Competitor's  Business,  Etc. 

There  a  complaint  was  sustained,  upon  demurrer,  in  which  de- 
fendant, a  banker,  by  false  accusations  and  threats,  as  well  as 
persuasion,  was  alleged  to  have  induced  many  of  the  patrons  of 
plaintiff,  a  barber,  to  cease  employing  him,  and  also  to  have 
caused  two  persons  employed  by  him  to  set  up  a  rival  barber 
shop,  controlled  by  him  (plaintiff)  to  divert  custom  from  plaintiff, 
all  with  the  malicious  purpose  of  ruining  plaintiff's  business,  and 
not  to  serve  any  legitimate  purpose  of  his  own.  Plaintiff  had 
refused  to  rent  a  shop  offered  him  by  defendant,  who  evidently 
resolved  to  punish  him  by  ruining  his  business. 

In  Dunshee  v.  Standard  Oil  Co.,  152  Iowa,  618,  the  doctrine 
of  simulated  competition  was  clearly  stated.  In  that  case  the 
Standard  Oil  Co.,  when  a  retailer  withdrew  part  of  its  business 
from  it,  set  up  a  competing  retail  business  and  conducted  it  in 
such  a  manner  as  to  force  the  retailer  out  of  business.  The 
court  sai4 :  — 

"We  may  concede  to  the  appellants  the  undoubted  right  to 
establish  a  retail  oil  business  in  Des  Moines,  to  employ  agents 
and  drivers,  and  send  them  out  over  the  same  routes  and  make 
sales  to  the  same  people  with  whom  the  Crystal  Oil  Company  was 
dealing,  but  in  so  doing  it  was  bound  to  conduct  such  business 
with  reasonable  regard  and  consideration  for  the  equal  right  of 
the  Crystal  Company  to  continue  its  business  and  to  continue 
supplying  oil  to  such  of  its  customers  as  desired  to  remain  with  it. 
If,  however,  there  was  no  real  purpose  or  desire  to  establish  a 
competing  business,  but  under  the  guise  of  pretense  or  competi- 
tion to  accomplish  a  malicious  purpose  to  ruin  the  Crystal  Com- 
pany or  drive  it  out  of  business,  intending  themselves  to  retire 
therefrom  w^hen  their  end  had  been  secured,  then  they  can  claim 
no  immunity  under  the  rules  of  law  which  recognize  and  protect 
competition  between  dealers  in  the  same  line  of  business  seeking 
in  good  faith  the  patronage  of  the  same  people.  And  if  under 
such  pretense  of  competition  defendants  maliciously  interfered 
with  the  business  of  the  Crystal  Oil  Company  in  the  manner 
charged,  and  injury  to  the  latter  was  thereby  inflicted,  a  right  of 
action  exists  for  the  recovery  of  damages."  ''^ 

"  This  case  may  be  compared  with  ulated  in  which  the  same  defendant 

an  earlier  case,  the  facts  of  which,  was    exonerated    from    habiUty    for 

however,   appear   to   differentiate  it,  various  acts  of  rivalry  and  attempted 

as  competition  was  not  merely  sun-  monopoly,  designed  to  force  it  out  of 


Interference  with  Employment  371 

The  above  case^  have  been  followed  in  Boggs  v.  Duncan-Schell 
F.  Co.,  163  Iowa,  106-1913;  143  N.  W.  483,  in  which  an  agent 
for  a  sewing  machine  was  superseded  by  plaintiff.  The  former 
agent  threatened  to  drive  the  other  out  of  business,  and  published 
misleading  advertisements,  offering  at  $25,  machines  falsely 
represented  to  be  of  the  same  grade  as  the  machines  sold  by 
plaintiff  for  $45.  He  refused,  however,  to  sell  any  machines  such 
as  he  advertised.  Held,  actionable.  Said  the  court:  —  ''There 
is  a  difference  between  lawful  competition  and  simulated  competi- 
tion carried  on  with  the  sole  purpose  and  intent,  not  of  profit  and 
gain,  but  of  maliciously  injuring  others.  *  *  *  The  law,  it 
was  said,  will  not  permit  a  trader  'Ho  simulate  that  which  is 
right  for  the  sole  purpose  of  protecting  himself  in  the  doing  of 
that  which  is  palpably  wrong." 

§  183.  Interference  with  employment,  actual  or  prospective. 
—  We  have  seen  that  to  injure  another's  business  by  persuading 
his  employees  to  leave  him,  is,  with  some  qualifications,  action- 
able. In  the  absence  of  sufficient  justification,  there  is  likewise 
liability  to  an  employee  or  person  desiring  employment  for  in- 
ducing his  discharge  or  preventing  him  from  obtaining  employ- 
ment. 

In  Joyce  v.  Great  Northern  Railway  Co.,  100  Minn.  225-1907, 
for  example,  it  was  held  actionable  to  induce  another  not  to  em- 
ploy an  applicant  for  employment,  except  on  condition  that  he 
release  defendant  from  a  claim  for  damages  arising  from  an  acci- 
dent, plaintiff  having  been  refused  employment  by  reason  of  de- 
fendant's interference.^" 

In  Huskie  v.  Griffin,  75  N.  H.  345-1909,  it  was  held  actionable 
to  prevent  A's  employment  by  B,  by  making  a  statement  con- 
cerning A  calculated  to  prejudice  B  against  him,^^  solely  to  injure 
B,  and  without  justification  in  any  legitimate  purpose  to  be  served. 

Withholding  a  certificate  of  character  from  an  employee  is  not 
actionable,  although  the  making  of  false  or  unfair  statements,  by 

business,    including    the    refusal    to  applicable,    if    there    had    been    no 

patronize  plaintiff's  line  of  transporta-  statute. 

tion  or  permit  others  to  do  so.  West  "The  court  even  saying  "that  a 

Virgiyiia  Trayisportation  Co.  v.  Stand-  statement  of  the  truth,  made  for  the 

ard  Oil  Co.,  50  W.  Va.  611-1902.  sole  purpose  of  damaging  the  plaintifiF 

^8  A  Minnesota  statute  was  applied,  by  causing  a  third  party  to  refuse  to 

but  the  court  discussed  the  common  further    deal    with    the    plaintiff,    is 

law,  which  was  evidently  considered  actionable  if  damage  ensues." 


372    Interference  with  a  Competitor's  Business,  etc. 

reason  of  which  another  took  action  causing  loss  to  a  former 
employee,  would  be  actionable.^^ 

Various  persons,  interested  in  the  administration  of  schools, 
but  found  to  have  acted  maliciously,  were  held  liable  in  damages 
for  procuring  the  dismissal  of  a  school  superintendent.^" 

§  184.  Damages, — Exemplary  damages  may  be  awarded  where 
the  wrong  was  willful  and  malicious.^"  Where  there  is  no  ex- 
press malice,  and  defendant's  object  was  merely  to  benefit  him- 
self, exemplary  damages  are  not,  as  a  rule,  recoverable,^'  for  in- 
jury to  business  should  not  be  merely  speculative  and  conjectural; 
but  if  it  is  certain  that  damages  have  been  caused  by  the  wrong- 
ful act  of  another,  uncertainty  as  to  the  amount  is  rarely  good 
reason  for  refusing  any  damages  at  all.  "The  jury  may  in  such 
case  give  such  temperate  damages  for  injury  to  business  as  they 
believe  to  be  reasonable  compensation  for  the  injury  which  must 
necessarily  result  from  the  act  of  the  defendant."  ^- 

In  estimating  damages,  the  profits  for  the  period  following  the 
injury  ma,y  be  compared  with  those  for  the  period  before,  making 
allowance  for  the  causes  shown  to  have  affected  profits.^^ 

''^  Dick  V.  Northern  Pacific  R.  Co.,  have    been     instructed    that    plain- 

86  Wash.  211-1915.  tiff    was    entitled    to    actual    dam- 

"  Faunce    v.    Searles,    122    Minn,  ages  and  also  to  such  exemplary  dam- 

343-1913.     Plaintiff's  office  was  held  ages     (not     exceeding     the     amount 

under    contract,    but    this    doubtless  claimed)  as  the  jury  might  allow.    See 

was  not  an  essential  element  of  the  Chapter  on  "  Profits  and  Damages." 

case.  ^'  Knickerbocker  Ice  Co.  v.  Gardiner 

80  Dunshee  v.  Standard  Oil  Co.,  152  Dairrj  Co.,  107  Md.  556;  16  L.  R.  A.  N. 

Iowa,   618,    631-1911;    (but    interest  S.  746. 

on    such    damages    is    not    recover-  ^^  Virtue   v.   Creamery  P.   M.   Co., 

able),  Virtue  v.  Creamery  P.  M.  Co.,  123  Minn.  17  (discussing  evidence  of 

123    Minn.    17-20;   Day   v.    Hunni"  damages). 

cutt,     160     S.     W.     134,     in     which  ^^  Hooker  C.  &  M.  Co.  v.  Hooker, 

there  was  actual  malice  and  intimi-  95  Atl.  649. 
dation;     held    that  the  jury  should 


CHAPTER  XIII 

Trade-Marks  —  General  Principles 

Section  185.  Marks,  trade-marks,  and  trade  names. 

186.  Definitions  of  a  trade-mark. 

187.  Functions  of  a  trade-mark. 

188.  Nature  of  a  trade-mark. 

189.  Essential  elements  of  a  technical  trade-mark. 

190.  Non-essentials  of  a  trade-mark. 

191.  Features  of  the  dress  or  appearance  of  goods  cannot  ordinarily 

become  technical  trade-marks. 

192.  Products  to  which  a  trade-mark  may  be  applied. 

193.  Marks  indicating  the  selector,  not  the  maker  of  goods. 

194.  Several  trade-marks  for  the  same  goods. 

195.  Must  be  affixed  to  goods. 

196.  The  use  of  a  sign  or  word  as  a  trade-mark  must  not  be  against 

public  policy. 

197.  Various  classifications  of  trade-marks. 

198.  Distinction  between  trade-marks  and  trade  names. 

199.  Difference  between  trade-marks  and  trade  names  not  one  of 

underlying  principle,  but  of  degree  and  method  of  proof. 

§  185.  Marks,  Trade-Marks  and  Trade  Names.  —  A  mark  is 
defined  as  ''a  symbol  or  character,  a  stamp,  brand  or  device, 
made  on  or  attached  to  something  to  identify,  distinguish  or  call 
attention:  *  *  *  an  object  serving  to  guide,  direct  or  point 
out."    (Standard  Diet.) 

The  terms  "trade-mark,"  "trade  name"  and  "technical  trade- 
mark" are  confused  constantly,  both  in  court  opinions  and  in  the 
public  press.  This  confusion  is  natural,  and  arises  out  of  the  man- 
ner in  which  the  law  of  trade-marks  has  been  developed  in  English 
and  American  jurisprudence. 

The  use  of  marks  on  merchandise  for  the  purpose  of  indicating 
the  maker  or  seller  thereof  has  existed  for  many  centuries.  A 
statute  existed  in  Parma  as  early  as  1282,  which  provided  for  the 
placing  of  marks  of  origin  upon  swords  and  other  articles.  In 
1452,  a  guild  statute  of  Lubeck  provided  that  "every  crossbow 
maker  shall  place  his  mark  upon  the  bow  of  each  crossbow  that 

373 


374  Trade-Marks  —  General  Principles 

he  makes,  in  token  that  he  has  done  and  will  do  his  work  in  a 
proper  manner."  Marks  of  this  sort  are  found  even  on  articles 
discovered  in  the  ruins  of  the  ancient  civilizations  of  the 
east. 

To  such  marks  as  these,  used  to  indicate  commercial  origin, 
the  term  ''trade-mark"  was  very  early  applied.  It  then  had  no 
signification  other  than  that  it  meant  a  mark  used  in  trade- 
Later  on,  the  English  courts  began  to  protect  persons  using 
such  marks  against  competitors  who  copied  these  marks  upon 
their  own  goods;  and  the  name  ''Trade-Mark"  came  to  have,  not 
only  this  general  meaning  defining  all  commercial  marks  of  iden- 
tification, but  acquired  a  technical  meaning  indicating  such  of 
these  marks  as  possessed  the  characteristics  necessary  to  insure 
their  protection  by  the  courts. 

Later  still,  statutes  were  passed  making  possible  the  registra- 
tion of  marks  used  in  trade  in  public  offices:  and  the  term 
"trade-mark"  was  further  used  to  indicate  marks  which  were 
susceptible  of  such  registration  within  the  meaning  of  these 
statutes. 

In  modern  times  the  term  "technical  trade-mark"  has  come 
into  use,  in  the  effort  to  overcome  this  confusion  and  is  now  used 
to  define  marks  which  are  trade-marks  at  common  law  and 
which  also  are  susceptible  of  registration  under  trade-mark 
statutes  existing  in  the  jurisdiction  in  which  the  mark  is  used,  as 
distinguished  from  mere  marks  of  trade. 

In  modern  times,  also,  the  term  "trade  name"  is  widely  used 
to  describe  various  commercial  symbols. 

These  expressions  may  be  defined  as  follows: 

A  "common  law  trade-mark"  is  a  commercial  mark  which 
may  be  appropriated  to  the  use  of  one  person  under  the  rules  of 
common  law  regardless  of  registration  statutes. 

The  term  "  technical  trade-mark"  is  applied  to  both  common- 
law  trade-marks  and  to  marks  which  may  be  registered  under  the 
trade-mark  statutes,  and  means  a  pure  trade-mark  as  distingushed 
from  various  other  trade  symbols  that  lack  the  characteristics 
necessary  to  become  trade-marks. 

A  "trade  name"  is  a  mark  used  to  indicate  origin,  yet  which  is 
neither  a  "common-law  trade-mark"  nor  a  registrable  trade- 
mark. These  names  are  nothing  more  than  marks  of  trade  that 
consist  of  names  instead  of  signs  or  emblems,  and,  further,  are 


Definition  of  a  Trade-Mark  375 

names  that  do  not  possess  the  necessary  characteristics  of  a 
trade-mark,  but  which  are  so  used  as  to  do  service  as  trade-marks. 
Trade-marks  existed  many  years  before  the  first  Registration 
Act  was  passed. 

§  186.  Definitions  of  a  Trade-Mark.  —  Judicial  definitions  of  the 
term  ''trade-mark"  might  be  multipHed  indefinitely;  and  in  the 
consideration  of  most  subjects  no  doubt  a  collection  of  definitions 
is  helpful.  Unfortunately  the  definitions  of  a  trade-mark  found 
in  the  cases  include  so  many  inconsistent  statements  that  it  is 
questionable  w^hether  a  collection  of  them  is  not  harmful,  rather 
than  helpful,  to  an  understanding  of  the  subject. 

The  difficulties  which  are  found  in  reconciling  the  various  state- 
ments found  in  the  many  definitions  of  a  trade-mark  which  now 
exist,  are  not  due  to  the  fact  that  the  term  is  difficult  to  define, 
for  it  has  a  very  exact  meaning,  but  rather  to  the  loose  use  to 
which  it  is  constantly  put  in  legal  literature. 

A  trade-mark,  legally  speaking,  is  a  definite,  specific  thing  hav- 
ing definite  and  specific  elements  of  component  parts  or  char- 
acteristics, which  are  susceptible  of  little,  if  any,  modification  in 
their  application.  The  term  "trade-mark"  is  popularly  applied 
to  any  sort  of  a  mark,  emblem  or  sjTnbol  used  in  trade,  regardless 
of  whether  it  possesses  the  necessary  characteristics  to  make  it  a 
legal  trade-mark  or  not. 

A  trade-mark,  therefore,  can  be  simply  and  accurately  defined 
by  stating  its  necessary  requisites.  They  are  these :  first,  it  must 
point  distinctively,  either  by  its  evident  meaning  or  by  associa- 
tion, to  the  origin  or  ownership  of  the  article  to  which  it  is  affixed ; 
second,  it  must  be  affixed  or  applied  to  a  commercial  article  or  its 
container;  third,  it  must  be  of  such  a  nature  that  it  can  be  law- 
fully appropriated  to  the  use  of  one  person,  to  the  exclusion  of 
all  others.^ 

Despite  the  constantly  growing  number  of  cases  involving 
trade-marks  which  come  before  the  courts,  there  still  exists  a 
very  marked  confusion  in  trade-mark  literature  as  to  the  nature 
and  characteristics  of  trade-marks,  and  there  is  perhaps  nothing 
which  will  do  more  to  eliminate  this  confusion  than  to  emphasize 
the  simple  but  absolutely  essential  requirements  of  a  legal  trade- 
mark. In  the  hope  of  doing  this,  the  author  has  intentionally 
omitted  any  compilation  of  the  definitions  of  the  term  "trade- 
1  Paul  on  Trade-Marks,  §  22. 


37()  Trade-Marks  —  General  Principles 

mark,"  thus  avoiding  the  confusion  incident  always  to  numerous 
restatements  of  the  same  propositions. 

"A  trade-mark  is  an  arbitrary,  distinctive  name,  symbol,  or 
device,  to  indicate  or  authenticate  the  origin  of  the  product  to 
which  it  is  attached."  ^ 

"The  purpose  of  the  trade-mark  is  to  get  before  the  public,  in  a 
unique  and  impressive  manner,  the  goods  on  which  the  mark  is 
used,  and  to  distinguish  such  goods  from  all  other  goods  on  the 
market  of  the  same  class  or  description.  It  serves  a  two-fold  pur- 
pose, —  to  protect  the  owner  from  unfair  competition,  and  the 
public  from  being  deceived."  '* 

The  Supreme  Court  of  the  United  States  thus  speaks  of  the 
trade-marks  as  they  are  known  to  our  law:  ''The  right  to  adopt  and 
use  a  symbol  or  a  device  to  distinguish  the  goods  or  property  made 
or  sold  by  the  person  whose  mark  it  is,  to  the  exclusion  of  use  by 
all  other  persons,  has  been  long  recognized  by  the  common  law 
and  the  chancery  courts  of  England  and  of  this  country.  *  *  * 
It  is  a  property  right  for  the  violation  of  which  damages  may  be 
recovered  in  an  action  at  law,  and  the  continued  violation  of  it 
will  be  enjoined  by  a  court  of  equity,  with  compensation  for  past 
infringement.  This  exclusive  right  was  not  created  by  the  act  of 
Congress,  and  does  not  now  depend  upon  it  for  its  enforcement. 
The  whole  system  of  trade-mark  property  and  the  civil  remedies 
for  its  protection  existed  long  anterior  to  that  act  (viz..  Act  of 
July  8,  1870),  and  have  remained  in  full  force  since  its  passage."  ^ 

The  term  ''technical  trade-mark"  defines  a  common-law  trade- 
mark. It  does  not  mean  a  mark  that  has  been  registered,  as 
distinguished  from  one  not  registered. 

§  187.  Functions  of  a  Trade-Mark. — A  trade-mark  is  essentially 
a  stamp  of  authenticity  of  merchandise,  or,  as  it  has  been  called, 
the  "commercial  signature"  of  the  trader.  "The  trade-mark 
l)rands  the  goods  as  genuine,  just  as  the  signature  to  a  letter 
stamps  it  as  authentic."  ^  Its  primary  purpose  is  to  distinguish,  — 
to  set  apart,  one  man's  merchandise  from  that  of  another.    It  is  a 

s  G.  W.  Cole  Co.  V.  American  Cement  Maltine  Co.,  30  App.  Cas.  (D.  C.)  340- 

Co.,  130  Fed.  703-1904,  at  p.  705  (C.  3-1908. 

C.  A.  7th  Cir.) ;  Sartor  v.  Schaden,  125  <^  Trade-Mark  Cases,  100  U.  S.  82-92. 

Iowa,  696-700-1904,  101  N.  W.  511-  « Kipling  v.  G.  P.  Putnam's  So7is, 

513.  120  Fed.  631,635. 

*  Peter  Schoenhofen  Brewing  Co.  v. 


Nature  of  a  Trade-Mark  377 

pure  monopoly:  it  must  be  a  monopoly  to  effect  its  purpose. 
A  trade-mark,  "generally  speaking,  means  a  distinctive  mark  of 
authenticity,  through  which  the  products  of  particular  manufac- 
turers or  the  vendible  commodities  of  particular  merchants  may 
be  distinguished  from  those  of  others."  '^ 

Judge  Vann,  of  the  Court  of  Appeals  of  the  State  of  New  York, 
in  1891  made  this  simple  statement:  ''The  function  of  a  trade- 
mark is  to  point  out  the  maker  of  the  article  to  which  it  is  at- 
tached." It  would  be  difficult  to  improve  upon  this  definition 
had  Judge  Vann  used  after  the  word  maker  the  words  "or 
vendor."  ^ 

The  trader  adopts  a  mark  in  order  that  he  may  create  a  distin- 
guishing brand  or  name  for  his  goods,  and  as  this  mark  is  used  it 
gradually  comes  to  identify  his  goods  to  the  purchasing  public, 
and  becomes  a  trade-mark.  "The  gist  of  a  trade-mark  is  its 
association  in  the  public  mind  with  a  product."  ^  "It  must  be 
designed,  as  its  primary  object  and  purpose,  to  indicate  the  owner 
or  producer  of  the  commodity,  and  to  distinguish  it  from  like 
articles  manufactured  by  others."  ^^ 

A  trade-mark  is  not  limited  in  function  to  indicating  merely 
the  owner  or  producer  of  goods  and  nothing  more.  It  may  at 
the  same  time  be  a  badge  of  quality.  But  it  must  indicate  the 
origin  of  the  goods  at  least  to  the  extent  that  the  public  considers 
that  all  goods  bearing  that  mark  come  from  one  and  the  same 
person  as  the  maker  or  seller  thereof. 

§  188.  Nature  of  a  Trade-Mark.  —  A  trade-mark  is  auxiliary  to 
the  good-will  of  the  business.  It  is  inseparable  from  it,  and  title 
to  the  trade-mark  cannot  be  transferred  apart  from  the  business. 
There  is  no  such  thing  as  a  trade-mark  in  gross.  ^^ 

Whether  or  not  a  trade-mark  is  property  has  often  been  dis- 
cussed.^^   The  present  consensus  of  opinion  is  that  a  right  to  the 

''Elgin  Nat'l  Watch  Co.  v.  Illinois  mark  "lacks  the  essential  characteris- 

Watch  Case  Co.,  179  U.  S.  665,  673.  tics  which  alone  give  it  value,  and 

*  Waterman  v.  Shipman,  130  N.  Y.  becomes  a  false  and  deceitful  designa- 

301-11.  tion.    It  is  not  by  itself  such  property 

=•  Pflugh  V.  Eagle  White  Lead  Co.,  as  may  be  transferred." 
185  Fed.  769,  771 .  i^  MacMahan    Pharmacal    Co.     v. 

^^  Columbia  Mill  Co.  v.  Alcorn,  150  Denver  Chemical  Mfg.  Co.,  113  Fed. 

U.  S.,  460  at  463.  468,  475  (C.  C.  A.,  8th  Cir.  1901). 

"  "  Dissociated  from  merchandise  to  Weston  v.  Ketcham,  51  How.  Pr.  (N.Y.) 

which  it  properly  appertains,"  a  trade-  455;  Jackson  Corset  Co.  v.  Cohen,  38 


378  Trade-Marks  —  General  Principles 

exclusive  use  of  a  trade-mark  is  property.  It  is  well  established 
also  that  the  association  between  merchandise  and  a  name  or 
design  which,  in  its  ordinary  use  and  meaning,  is  in  the  public 
domain  is  the  property  of  the  concern  with  which  such  name  or 
design  is  thus  commercially  related  in  the  public  mind.  "Com- 
mon-law trade-marks,  and  the  right  to  their  exclusive  use,  are  of 
course  to  be  classed  among  property  rights."  Hanover  Star 
Milling  Co.  v.  Metcalf.^^"  See  discussion  of  this  question  in  this 
opinion. 

The  trade-mark  is  the  expression,  the  symbol,  of  part  or  all  of 
the  good-will  of  the  business  using  the  mark.  A  trade-mark  is 
just  as  necessary  to  the  creation  and  development  of  good-will  as 
words  are  to  the  use  and  expression  of  thoughts.  Separate  from 
the  good-will  of  the  business  it  identifies,  it  is  useless,  valueless; 
similarly  good-will  separated  from  the  trade-marks  by  use  of 
which  the  public  have  created  it,  is  valueless.  ''Ivory  Soap" 
has  a  valuable  good-will.  But  assume  that  the  word  "Ivory" 
ceases  to  have  any  association  with  this  soap  and  the  good-will 
of  the  makers  of  it  is  valueless  so  far  as  this  brand  of  soap  is 
concerned. 

"In  its  last  analysis  a  trade-mark  is  a  name  or  sign  or  symbol, 
which  indicates  or  certifies  that  a  given  article  or  commodity  is 
in  reality  what  it  claims  or  purports  to  be.  It  has  no  intrinsic 
value  whatever.  It  is  merely  a  certificate  of  the  truth."  ^^  It  is 
a  badge  of  commercial  genuineness  —  authenticity. 

It  is  not  necessary  to  the  validity  of  a  trade-mark  that  it  be 
invented  or  devised  by  the  one  using  it.  It  even  may  be  forced 
upon  him  by  public  usage  against  his  wishes. 

"The  ordinary  trade-mark  has  no  necessary  relation  to  invention 
or  discovery.  The  trade-mark  recognized  by  the  common  law 
is  generally  the  growth  of  a  considerable  period  of  use,  rather  than 
a  sudden  invention.  It  is  often  the  result  of  accident  rather  than 
design,  and  when  under  the  Act  of  Congress  it  is  sought  to  es- 

App.  Cas.  D.  C.  482;  Jaysee  Corset  Co.  not  taxable  property  under  the  statute, 

{In  re),  201  Fed.  779,  are  only  a  few  and  remarking  that  no  case  had  been 

of  many  authorities  on  this  point.  cited  in  which  either  a  trade-mark  or 

'2"  240  U.  S.  403-413.  the  good  will  of  a  lousiness  had  been 

"  Commonwealth  v.  Kentuchj  Dis-  treated  as  property  for  the  purposes  of 

tilleries  &  Warehouse  Co.,  132  Ky.  521  taxation. 
(1909),  holding  that  a  trade-mark  was 


Essential  Elements  of  a  Technical  Trade-Mark    379 

tablish  it  by  registration,  neither  originality,  invention,  discov- 
ery, science  nor  art  is  in  any  way  essential  to  the  right  conferred 
by  that  act."  '' 

Nor  does  a  trade-mark  confer  or  imply  any  monopoly  in  goods, 
as  does  a  patent.  ^^  Its  primary  object  is  to  preserve  the  identity  — 
the  personality  of  merchandise,  not  merely  the  rights  of  him  who 
first  devised  it,  or  first  used  it  as  a  badge  of  origin.  This  is  clearly 
shown  by  the  history  of  many  famous  trade-marks.  The  Singer 
Company's  rights  in  the  patents  that  it  has  owned  expired  with 
the  term  of  the  patents.  Anyone  thereafter  could  use  the  ideas  con- 
tained in  the  letters  patent;  but  no  one  is  allowed  to  make  free  with 
the  celebrity  that  this  company  acquired  under  the  name  ''Singer" 
as  a  maker  (not  inventor)  of  sewing  machines. '''  The  patent  owner 
is  protected  in  his  ownership  of  his  patent  as  a  right  vested  in  him; 
the  trade-mark  is  protected,  in  part,  at  least,  to  shield  the  public 
from  imposition,  confusion  and  deceit. 

Monopoly  in  the  use  of  the  mark  itself  is  necessary  to  protect 
the  trader  against  others  who,  by  its  use  or  simulation,  may  seek  to 
mislead  the  public,  and  so  divert  trade  from  the  owner  of  the  mark. 

§  189.  Essential  Elements  of  a  Technical  Trade-Mark.  —  The 
essential  elements  or  characteristics  of  a  technical  or  pure  trade- 
mark are  four  in  number. 

1.  It  must  be  a  word  or  device  that  lawfully  may  be  appro- 
priated by  the  trader  to  distinguish  his  specific  products,  without 
violating  rights  of  other  persons  to  use  the  mark. 

2.  Its  main  or  primary  function  must  be  to  indicate  the  origin 
of  the  goods;  not  primarily  to  distinguish  a  particular  grade,  style 
or  size  of  the  trader's  product.  ^^  It  may  incidentally  indicate  grade 
or  quality  also,  but  it  must  be  capable  of  distinguishing  one 
article  from  all  others  as  regards  origin  or  ownership. 

"  Trade-Mark  Cases,  100  U.  S.  82,  sold  in  the  market."    Garst  v.  Hall 

94-1879;  Canal  Co.  v.  Clark,  13  Wall.  &    Lyon    Co.,    179    Mass.    588,    591 

311;  Wm.  J.  Moxley  Co.  v.  Braun  &  (1901). 
Fitts  Co.,  93  111.  App.  183.  i"  Singer  Mfg.  Co.  v.  June  Mfg.  Co., 

15  "The  plaintiff's  trade-mark  does  1  163  U.  S.  169. 
not  give  him  the  rights  of  a  patentee  "  See  Beadleston  &  Woerz  v.  Cooke 

in   property   manufactured   under   a  Brewing  Co.,  74  Fed.  229  (C.  C.  A. 

patent.    His  trade-mark  is  to  secure  7th  Cir.  1896),  in  which,  there  being  a 

him  and  the  public  from  deception  common   trade-mark  for   all   grades, 

and  fraud  as  to  the  origin  and  source  "Imperial"  was  applied  to  one  of  three 

of  these  goods  and  of  similar  goods  grades  of  beer. 


380  Trade-Marks  —  General  Principles 

I  3.  A  trade-mark  must  have  been  used  to  some  extent  on  the 
goods  it  is  designed  to  identify.  It  is  not  enough  to  select  a  mark, 
or  having  selected  it,  to  advertise  it.  It  must  be  used  as  a  trade- 
mark upon  goods  actually  sold  or  offered  for  sale  in  the  usual 
course  of  business,  ^^  and  it  must  be  physically  affixed  to  the  goods 
or  to  the  packages  containing  them.^^" 

4.  Its  use  as  a  trade-mar]v  must  not  be  against  public  policy; 
that  is,  it  must  not  be  either  false  or  deceptive  in  its  meaning  or 
implication,  or  indecent,  scandalous,  etc. 

§  190.  Non-Essentials  of  a  Trade-Mark.  —  A  trade-mark  need 
not  be  novel,''-'  nor  is  it  necessary  that  on  its  face  it  indicate  the 
name  or  identity  of  the  proprietor,  or  show  the  origin  or  ownership 
of  the  goods. ^'^ 

Registration  is  not  essential  to  the  validity  of  a  trade-mark, 
nor  does  registration  make  the  mark  registered  into  a  trade-mark. 
The  law  of  trade-marks  long  antedates  registration  statutes,  and 
is  a  development  of  the  common  law.  Certain  advantages  may 
be  derived  from  registration;  but  failure  to  register  does  not 
prejudice  one's  common-law  rights  in  a  trade-mark. ^^ 

The  fact  that  one  does  register  what  is  a  good  common-law 
trade-mark  does  not  impair  his  common-law  rights  or  compel 
him  to  resort  to  the  statute  for  protection.  Registration,  irre- 
spective of  the  provisions  of  the  statute,  may,  however,  be  useful 
as  evidence  of  intention  to  claim  a  mark  as  a  trade-mark  and  of  a 
claim  of  title  to  it,  and  of  what  the  registrant  claimed  his  mark 
consisted  when  he  registered  it. 

§  191.  Features  of  the  Dress  or  Appearance  of  Goods  Cannot 
Ordinarily  Become  Technical  Trade-Marks.  —  The  physical  fea- 

i«See  chapter  on  "Acquisition  and  Thomas  Mfg.  Co.,  94  Fed.  651,  656 

Manner  of  Use  of  Trade-marks."  (1899);  citing  authorities  to  the  effect 

i«"  Waldes   v.  International   Manu-  that  it  is  enough  that  the  mark  has 

fadurers'     Agency,     237     Fed.      502  acquired  by  association  an  understood 

(1910).  reference  to  origin. 

'3  "  If  it  is  new  in  its  appUcation  to  "i  gge  Chapter  I,  §  3,  and  see  Chap- 

the   particular   merchandise   in   con-  ter"  Registration  under  U.  S.  Statute." 

troversy,  it  may  be  entitled  to  pro-  Under   the   peculiar  wording   of  the 

tection."      Wm.    J.    Moxley    Co.    v.  California  statute,  it  was  at  one  time 

Braun  &  Fitts  Co.,  93  111.  App.  183,  held  in  that  state  (lF/ii«ier  v.  Die<2,  66 

186  (1900).  Cal.  78,  1884)  that  a  trade-mark  must 

20  Godillot  V.  Harris,  81  N.  Y.  263,  be  filed  for  record  to  be  protected,  but 

266    (1880);    Dennison    Mfg.   Co.    v.  the  statute  was  afterwards  changed. 


Products  to  Which  a  Trade-Mark  May  Be  Applied    381 

tures,  peculiar  appearance,  ornamentation  of  the  article  itself,  ele- 
ments of  its  dress  or  get-up,  such  as  the  special  features  of  wrappers 
or  containers,  labels,  etc.,  and  reproduction  thereof,  cannot  ordi- 
narily become  technical  trade-marks.  Often,  however,  these  fea- 
tures of  an  article  are  used  by  many  to  identify  it,  and  for  this  rea- 
son it  pays  a  rival  to  copy  these  features  of  a  well-known  article  and 
thus  confuse  his  goods  with  those  well-known.  Acts  of  this  sort 
are  violations  of  the  law  of  unfair  competition  and  are  discussed 
elsewhere.  (See  index  under  such  headings  as  ''Similarity" 
''Dress"  "Substitution,"  etc.) 

§  192.  Products  to  which  a  Trade-Mark  may  be  Applied.  — 
Trade-marks  may  be  applied  not  only  to  manufactured  articles,  but 
to  any  thing  that  is  sold  to  the  public.  Natural  products,  such 
as  mineral  or  spring  water,--  fruit,  vegetables  and  the  like  may  be 
identified  by  trade-marks.  It  has  been  held,  however,  that  a 
trade-mark  may  not  be  applied  to  a  natural  product  that  is  or- 
ganic and  reproductive,  such  as  a  grape-vine.-^  In  England  a 
trade-mark  applied  to  vegetables  has  been  upheld.^"*  The  final 
protocol  of  the  International  Convention  of  1883  for  the  protec- 
tion of  industrial  property  contains  the  following  provision: 
"The  words  Industrial  Property  are  to  be  considered  in  their 
widest  acceptation  in  the  sense  that  they  apply  not  only  to  the 
productions  of  industry  so-called,  but  equally  to  the  productions 
of  agriculture  (wines,  grains,  fruits,  cattle,  etc.),  and  to  mineral 
productions  used  in  commerce  (mineral  waters,  etc.)" 

§  193.  Marks  Indicating  the  Selector  not  Maker  of  Goods. — 
Selectors  as  well  as  makers  of  goods  may  use  a  trade-mark.  A 
person  may  use  a  trade-mark  to  indicate  his  ability  to  pick  out 
goods,  although  all  his  goods  are  made  by  others.  Certain 
automobiles  are  sold  under  trade-marks  by  concerns  that  manufac- 
ture practically  nothing  connected  with  them.  A  shoe  dealer  may 
sell  under  his  own  brand  shoes  that  are  made  entirely  by  another. 
These  are  known  in  trade  as ' '  private  brands."     He  who  uses  such 

22  Congress  &  Empire  Spring  Co.   v.  the  name    claimed   as  a   trade-mark 

High  Rock    Congress    Spring  Co.,  45  was  applied  to  stone  from  a  quarry. 
N.  Y.  291  (1871);  Parkland  Hills  B.         ^^  Hoyt    v.    J.    T.    Lovett    Co.,    71 

L.  W.  Co.  V.  Hawkins  &  Co.,  95  Ky.  Fed.  173.   This  case  should  be  followed 

502  (1894);  Virginia  Hot  Springs  Co.  with  caution. 

V.    Hegeman    &    Co.,    138   Fed.    855  -*  Major  Bros.  v.  Franklin  &  Son,  25 

(1905).     In  John  T.  Dyer  Quarry  Co.  Rep.  Pat.  Cases,  406-1908. 
V.  Schuylkill  Stone  Co.,  185  Fed.  557, 


382 


Trade-Marks  —  General  Principles 


a  brand  becomes  sponser  for  the  goods  marked  with  the  brand. 
Such  a  person  may  enjoin  another  from  the  use  of  his  brand 
quite  as  fully  as  if  he  actually  manufactured  the  goods  he  sells. 

§194.  Several  Trade-Marks  for  the  Same  Goods.  —  Whether 
several  different  marks  for  the  same  goods  may  be  used  for  the  pn- 
mary  purpose  of  pointing  to  the  origin  of  the  goods,  and  whether 
they  are  so  used  as  to  accomplish  that  purpose  with  the  public  is 
primarily  a  question  of  fact.  If  they  are  so  used  they  are  good 
trade-marks.  There  is  apparent  confusion  in  the  earlier  cases, ^^ 
but  the  broad  dictum,  that  one  may  have  only  one  mark  for  the 
same  goods, -"^  has  been  disapproved,  and  can  no  longer  be  con- 
sidered as  law.27  Learned  Hand,  J.,  says,  —  "In  principle  there 
is  no  possible  ground  for  refusing  to  recognize  any  number  of 
trade-marks  which  are  really  such."  ^^    It  is  ahnost  entirely  a 


"  In  Albany  Perforated  Wrapping- 
Paper  Co.  v.  John  Hoberg  Co.,  102  Fed. 
157  (1900),  it  was  held  that  several 
trade-marks  could  not  be  used  for  the 
same  article.  In  view  of  the  more 
recent  cases,  which  settle  the  law  to 
the  effect  that  it  is  possible  to  have 
more  than  one  trade-mark  for  the 
same  goods,  it  may  be  enough  to  note 
that,  although  the  rule  is  too  broadly- 
stated,  the  decision  in  this  case  may  be 
supported  on  the  facts,  as  there  seems 
to  have  been  a  very  large  number  of 
names  or  brands  used  for  different 
grades  and  sizes  of  toilet  paper,  so 
that  the  court  was  satisfied  that  the 
purpose  of  a  trade-mark  was  not  and 
could  not  be  attained,  Jenkins,  C.  J., 
saying:  "A  court  of  equity  cannot  be 
impressed  by  an  appeal  to  protect 
that  which  produces  infinite  confu- 
sion"-159.  This  case  was  affirmed  on 
appeal  (109  Fed.  589),  the  Circuit 
Court  of  Appeals,  7th  Circuit,  consid- 
ering it  to  have  been  decided  on  the 
ground  that  the  names  employed  were 
intended  to  distinguish  sizes,  shapes 
and  qualities,  and  not  origin.  But  in 
Welsbach  Light  Co.  v.  Adam,  107  Fed. 
463,  tliis  was  questioned,  except  as 


limited  to  a  case  of  confusion,  in  which 
the  plurality  of  marks  and  the  circum- 
stances of  their  use  prevents  the  ac- 
complishment of  the  proper  purpose  of 
a'trade-mark,  namely,  to  indicate  origin. 

28  Candee  v.  Deere,  54  111.  439. 

"  Capewell  Horse  Nail  Co.  v. 
Mooney,  167  Fed.  575;  Independent 
Baking  Powder  Co.  v.  Boorrnan,  175 
Fed.  448;  Gorham  Mfg.  Co.  v.  Wein- 
traub,  196  Fed.  957. 

28  In  Loonen  v.  Ddtsch,  189  Fed. 
487,  492,  Hand,  D.  J.,  says:  "Now,  in 
principle,  there  is  no  possible  ground 
for  refusing  to  recognize  any  number 
of  trade-marks  which  are  really 
such.  *  *  *  If  a  man  uses  four  or 
five  marks  together,  it  may  be,  there- 
fore, doubtful  whether  as  matter  of 
fact,  any  single  one  had  ever  got  to 
mean  his  goods,  but  the  trouble  is 
merely  one  of  fact,  and  there  is  no 
reason  that  I  can  see,  why  if  that  fact 
exists,  the  court  should  take  from  him 
the  means  he  has  created  of  identifj^- 
ing  his  wares.  In  Candee  v.  Deere,  54 
111.  439,  5  Am.  Rep.  125,  there  is  talk 
of  confusion,  but  that  begs  the  ques- 
tion, for  if  it  be  a  true  trade-mark 
alone,  there  can  be  no  confusion.    Cer- 


Must  Be  Affixed  to  Goods  383 

question  of  the  extent  and  character  of  the  use  to  which  the 
name  is  put. 

There  may  be  different  trade-marks  for  different  grades  of 
the  same  product,  provided  they  are  so  used  as  distinctly  to 
indicate  origin  as  well  as  grade.  It  does  not  vitiate  a  trade- 
mark, to  show  that  it  indicates  grade  or  quality  m  addition  to 
origin.-^ 

§  195.  Must  be  Affixed  to  Goods.  —  It  has  always  been  held  to 
be  an  essential  element  of  a  technical  trade-mark  that  it  should  be 
in  some  manner  physically  affixed  or  attached  to  a  marketable  pro- 
duct or  its  container,^"  and  the  rule  is  that  a  trade-mark  is 
only  valid  when  attached  to  the  article  or  wrapper,  or  in  some 
manner  physically  connected  with  the  article  itself.  ^^  This  is 
inherent  in  the  very  idea  of  a  trade-mark.  To  hold  otherwise 
would  be  a  contradiction  of  terms.  The  use  of  a  trade-mark, 
apart  from  the  goods  it  identifies,  is  not  using  the  mark  in  a 
purely  trade-mark  sense  but  rather  as  a  trade-name. 

The  use  of  a  name,  not  on  the  goods,  but  met'ely  as  a  sign 
placed  on  a  building  or  in  a  shop  will  not  make  the  name  a 
trade-mark.^-  It  is  not  enough  to  place  loosely  upon  the  goods 
exhibited  for  sale,  a  card  bearing  the  name  or  words  claimed  as 
a  trade-mark.  ^3 

tainly  if  the  public  has  solved  that  tion,   may   serve   the   purpose   of   a 

difficulty  of  more  than  one  mark,  the  trade-mark,  as  well  as  a  device  in- 

court  becomes  officious  in  forbidding  vented  or  arbitrarily  selected.     So  a 

the  maker  from  continuing  to  use  what  person  may  have  different  symbols  for 

the  public  already  understands."  different  grades  of  goods,  which,  in 

'^  Dixie  Cotton  Felt  Mattress  Co.  v.  the    same    way,    will    indicate    both 

Stearns  &  Foster  Co.,  185  Fed.  431  quality  and  origin  with  respect  to  the 

("Lenox,"  "Windsor,"  "Anchor,"  for  goods  so  marked." 

different  grades  of  mattress);  Cape-  ^^Diederich v. W.Schneider  Wholesale 

well  Horse  Nail  Co.  v.  Mooney,  167  W.  &  L.  Co.,  195  Fed.  35  (C.  C.  A. 

Fed.  575   (different  grades  of  horse  8th  Cir.  1912). 

shoe  nails),  the  court  saying:  "It  is  ^^  HazeUoji  Boiler  Co.   v.   HazeUon 

immaterial  that  the  mark  indicates  Tripod  Boiler  Co.,  142  lU.  494;  Oakes 

grade  as  well  as  origin,  and  is  also  v.  St.  Louis  Candy  Co.,  146  Mo.  391. 

ornamental,  if  the  primary  purpose  of  ^^  Qakes  v.  St.  Louis  Coudy  Co.,  146 

adoption    and   use   was    to    indicate  Mo.  391;  Covert  v.  Bernat,  156  Mo. 

origin  "-586.    American  Leather  Button  App.  687  (sign  placed  over  or  in  front 

Co.  V.  Anthony,  15  R.  I.  338:  "  Witliin  of  place  of  business  not  a  trade-mark; 

limits  which  are  well  defined,  a  com-  protected,  if  at  all,  as  a  trade-name, 

bination  of  letters  or  figures,  arranged  ''  Oakes  v.  St.  Louis  Candy  Co.,  146 

for  convenience  or  to  attract  atten-  Mo.  391  (1898). 


384  Trade-Marks  —  General  Principles 

The  mark  may  be  impressed  upon  the  product.  A  check  or 
figure  of  a  particular  pattern  impressed  on  the  under  side  of  a  nail 
head  which  was  intended  to  indicate  the  manufacturer,  and  to  be  a 
trade-mark  has  been  held  to  be  a  pure  or  technical  trade-mark. ^* 
It  was  so  held  in  spite  of  the  fact  that  a  check  pattern  of 
some  kind,  producing  a  gripping  surface,  might  be  a  necessary  or 
useful  incident  in  the  process  of  manufacture.  This  case  has 
been  followed  and  approved. ^'^ 

,      Neither  the  product  itself,  nor  an  integral  part  of  it,  can 

/  serve  as  a  technical  trade-mark, '^'^  although  a  watermark,  or  a 
I  design  blown  into  a  bottle,  or  woven  into  cloth  may  be  j:)rotected 
I  as  a  trade-mark  if  it  possesses  the  other  necessary  characteristics. 

I  It  has  been  held  that  an  uncopyrighted  picture  postcard  could 
not  be  a  trade-mark,  and  the  exact  reproduction  of  such  cards 

I  by  a  competitor  was  not  restrained.^''  "Merrie  Christmas" 
woven  into  ribbon  tape  at  intervals,  and  adding  to  the  value  of  the 
product  (intended  for  tying  Christmas  packages) ,  was  held  not  to 
be  a  good  trade-mark. ^^  It  has  been  repeatedly  held  that  col- 
ored checks  in  cord,  formed  by  using  one  strand  of  a  particular 
color,  cannot  be  a  trade-mark. ^^ 

§  196.  The  Use  of  a  Sign  or  Word  as  a  Trade-Mark  Must  Not 
be  Against  Public  Policy.  —  The  provision  of  the  United  States 
statute  excluding  from  registration  marks  that  are  scandalous  or 
immoral  in  their  purport,  corresponds  to  the  common-law  rule. 
A  trade-mark  must  not  convey  a  false  or  deceptive  mean- 
ing. Marks  that  in  their  meaning  or  implication  are  false  or  de- 
ceptive are  not  good  trade-marks,  and  will  not  be  protected.  For 
example,  "Syrup  of  Figs"  (for  a  laxative  medicine  which  con- 
tained practically  no  ingredient  of  figs)  was  refused  protection 

^*Capewell     Horse     Nail     Co.     v.  Cordage    Mills,    193    Fed.    274;    see, 

Mooney,  167  Fed.  575,  aff'd  172  Fed.  also,    194   Fed.   573    (explaining   the 

826.  distinction  between  this  case  and  one 

**  Capewell  Horse  Nail  Co.  v.  Green,  in  which  the  mark  is  impressed  upon 

182  Fed.  404;  aff'd  188  Fed.  20.  the  product,  but  is  not  a  functional  or 

"  See   Samson    Cordage    Works    v.  integral  part  of  it) .    In  the  same  case 

Puritan  Cordage  Mills,  211  Fed.  603,  on  appeal,  211  Fed.  603  (C.  C.  A.,  6th 

(C.  C.  A.,  6th  Cir.    1914).  Cir.  1914),  the  ruling  as  to  the  ques- 

"  Bamforth  v.  Douglass  P.  C.  &  M.  tion  of  strict  trade-mark  was  affirmed, 

Co.,  158  Fed.  355.  but  unfair  competition  was  found  in 

'8  Smith  V.  Krause,  160  Fed.  270.  the  similarity  of  visual  appearance. 

'^  Samson  Cordage  Works  v.  Puritan 


Trade-Mark  Must  not  be  Against  Public  Policy    385 

because  deceptive.^"  ^'Old  Country  Soap"  (where  the  soap  was 
manufactured  in  the  United  States)/^  "Half  Spanish"  for  cigars 
(where  the  tobacco  was  not  half  Spanish) ;  ^^  ''Gold  Medal"  (where 
no  medal  had  been  obtained) ;  '^^  ''East  Indian"  applied  to  a  medi- 
cine (where  the  remedy  was  made  in  the  United  States);  ^'*  "Fruit 
Vinegar"  (where  the  vinegar  was  not  made  from  fruit) ;  ^^  "Pepper 
Whiskey"  used  in  connection  with  a  liquor  (which  was  in  fact  a 
mixture  of  Pepper  whiskey  and  other  whiskeys) ;  ^*^  "Bromo  Qui- 
nine" for  medicine  (containing  no  bromides) ;  ^^  are  illustrations  of 
this  rule. 

"Red  Cross"  has  been  held  not  to  be  deceptive,  as  it  is  not  re- 
garded as  necessarily  implying  any  relation  to  the  society  of  that 
name.^^ 

That  the  name  of  the  manufacturer  included  in  the  trade-mark 
is  inaccurately  given,  is  not  necessarily  an  objection  to  the  valid- 
ity of  the  trade-mark.  ^^ 

The  general  subject  of  the  effect  of  misrepresentations,  in  con- 
nection with  trade-marks,  labels,  advertising  matter  and  the  like, 
is  considered  under  the  heading  of  "  Defenses,"  the  well-established 
rule  being  that,  even  if  the  trade-mark  itself  is  not  deceptive,  a 
court  of  equity  will  refuse  relief  to  a  suitor  who  has  deceived  the 

«  Warden  v.  Cal.  Fig  Syrup  Co.,  187  But  under  the  U.  S.  Act  of  1905  the 

U.  S.  516.    It  is  true,  however,  that  red  cross  cannot  be  used  for  a  regis- 

this  is  not  clearly  a  technical  trade-  tered   mark    (unless   by   prescriptive 

mark  case.     It  is  one  illustration  of  right  under  the  ten-year  clause), 

the  dilemma  of  a  mark   (or  name)  ^^  Dale  v.  Smithson,  12  Abb.  Pr.  237 

being  either  descriptive  or  deceptive.  (N.  Y.  Com.  Pleas,  1861).     In  this 

"  Allan  B.  Wrisley  Co.  v.  Iowa  Soap  case  the  name  of  the  manufacturer  was 

Co.,  104  Fed.  548  (C.  C.  Iowa,  1900).  only  in  part  correct,  but  there  was  not 

^2  T.  M.  Kildow  Cigar  Co.  v.  George  B.  deemed  to  be  any  attempt  to  deceive, 

Sprague  Cigar  Co.,  35  App.  Cas.  D.  C.  nor  actual  deception  of,  the  public.    In 

345  (1910), (denying  registration  under  a  still  earlier  case,  Stewart  v.  Smithson, 

Federal  statute).  1  Hilt.  119  (N.  Y.  Com.  Pleas,  1856),  it 

"  Taylor   v.   Gillies,   5   Daly,   285  was  held  that  it  was  no  defense  to  a 

(affd.  59  N.  Y.  331).  suit    to   restrain   infringement    of   a 

^*  Conyiell  v.  Reed,  128  Mass.  477.  trade-mark,  that  it  contained  an  en- 

*^  Alden    v.    Gross,    25    Mo.    App.  tirely  incorrect  representation  as  to 

123.  the  manufacturer  and  the  place  of 

^8  Krauss  v.  Peebles^  Sons  Co.,  58  manufacture,  and  that  it  described  the 

Fed.  585.  goods  as  "patent  thread,"  although 

"  Paris  Medicine  Co.  v.  Hill  Co.,  102  not  patented  in  fact.  This  case,  how- 
Fed.  148.  ever,   can  hardly  be   considered  au- 

*^  Loonen  v.  Deitsch,  189  Fed.  487.  thoritative  at  the  present  time. 


386  Trade-Marks  —  General  Principles 

public  in  building  up  his  trade,  and  who  therefore  does  not  come 
into  court  with  clean  hands. 

A  trade-mark  must  be  consistently  applied  and  used  in  good 
faith.  For  example,  if  a  mark  is  used  only  when  the  goods  are 
sold  at  a  reduced  price  to  meet  competition,  when  marketed  at 
higher  prices  smch  use  of  the  mark  will  not  be  protected,*  the 
same  goods  being  sold  under  different  murks. 

§197.  Various  Classifications  of  Trade-Marks.  —  The  most 
obvious  division  of  trade-marks  is  that  indicated,  for  example, 
in  Hier  v.  Abrahams,  82  N.  Y.  519,  523,  namely,  (a)  pictures  or 
symbols,  and  (b)  words.  The  following  is  suggested  as  a  fuller 
and  fairly  serviceable  classification: 

1.  Pictures,  devices  or  emblems. 

2.  Words  (either  one  word  or  a  combination  of  words). 

(a)  Personal  names. 

(b)  Common  words  of  the  language  (including  geograph- 

ical, historical  and  other  names)  applied  in  a  special 
and  arbitrary  sense. 

(c)  Artificial  or  invented  words :  (either  meaningless  when 

adopted,  or  at  best  suggestive  of  some  character- 
istic of  the  goods). 

3.  Letters  of  the  alphabet  and  numerals. 

4.  Pictures    or    devices    in    combination    with    a    word    or 

words:  (including  words  written  in  a  peculiar  script  or 

design). 
The  above  classification  is  intended  to  apply  to  common  law 
rules  rather  than  to  the  rules  governing  registration  under  the 
statutes. 

§  198.  Distinction  Between  Trade-Marks  and  Trade-Names.  — 
These  terms  to  a  certain  extent  overlap.  One  distinction  is  that 
a  trade-mark  "is  applicable  only  to  a  vendible  article  of  merchan- 
dise to  which  it  is  afhxed,"  while  "a  trade-name  relates  to  a  busi- 
ness and  its  good  will  rather  than  a  vendible  commodity. "^^ 

"Trade-name"  has,  however,  a  somewhat  broader  meaning 
than  this,  although  it  is  not  really  capable  of  exact  definition.  It 
includes,  in  general,  names  which  perform  the  functions  of 
trade-marks,  but  which  are  not  susceptible  of  being  set  apart  to 
the  exclusive  use  of  one  concern.    A  trade-mark  is  always  used 

*"  Independent  Baking  Powder  Co.  v.  ^i  QqH    y.    Broadway    Bazaar,    194 

Boorman,  175  Fed.  448.  N.  Y.  429,  434-35. 


Trade-Maiiks  and  Trade-Names  387 

to  mark  and  distinguish  the  goods  themselves  and  must  be  at- 
tached to  them;  while  a  trade-name  need  not  be,  and  often  is  not, 
so  used  and  attached,  but  is  used  to  distinguish  not  only  the  goods 
but  the  concern  selling  the  goods,  its  place  of  business  and  the 
like;  and  is  used  not  only  on  the  goods,  but  in  advertising  and  in 
other  ways  apart  from  the  goods. 

Actions  brought  against  the  infringer  of  a  trade-mark  or  a  trade- 
name both  rest  upon  the  same  principle,  which  is  that  no  man  has 
a  right  to  pass  off  his  goods  upon  the  public  as  and  for  the  goods 
of  another.  ''Inasmuch  as  the  testimony  shows  unfair  competi- 
tion, which  entitled  them  (plaintiffs)  to  an  injunction,  it  is  deemed 
unnecessary  to  discuss  the  distinctions  which  seem  to  differen- 
tiate this  case  from  one  of  trade-mark,  pure  and  simple  —  the 
foundation  principle  upon  which  relief  is  granted  being  substan- 
tially the  same  and  the  like  remedy  invoked."  ^^ 

Again,  "An  infringement  of  such  trade-mark  consists  in  the  use 
of  the  genuine  upon  substituted  goods,  or  of  an  exact  copy  or 
reproduction  of  the  genuine,  or  in  the  use  of  an  imitation  in  which 
the  difference  is  colorable  only,  and  the  resemblance  avails  to  mis- 
lead so  that  the  goods  to  which  the  spurious  trade-mark  is  affixed 
are  likely  to  be  mistaken  for  the  genuine  product;  and  this  upon 
the  ground  that  the  trade-mark  adopted  by  one  is  the  exclusive 
property  of  its  proprietor,  and  such  use  of  the  genuine,  or  of  such 
imitation  of  it,  is  an  invasion  of  his  right  of  property.  Unfair 
competition  is  distinguishable  from  the  infringement  of  a  trade- 
mark in  this:  that  it  does  not  involve  necessarily  the  question  of 
the  exclusive  right  of  another  to  the  use  of  the  name,  symbol, 
or  device.  A  word  may  be  purely  generic  or  descriptive,  and  so 
not  capable  of  becoming  an  arbitrary  trade-mark,  and  yet  there 
may  be  an  unfair  use  of  such  word  or  symbol  which  will  constitute 
unfair  competition.  Thus  a  proper  or  geographical  name  is  not 
the  subject  of  a  trade-mark,  but  may  be  so  used  by  another  un- 
fairly, producing  confusion  of  goods,  and  so  come  under  the  con- 
demnation of  unfair  trade,  and  its  use  will  be  enjoined.  The  right 
to  the  use  of  an  arbitrary  name  or  device  as  indicia  of  origin  is 
protected  upon  the  ground  of  a  legal  right  to  its  use  by  the  person 
appropriating  it."  ^^ 

52  Scriven  v.  North,  134  Fed.  366-  "  G.  W.  Cole  Co.  v.  American  Cement 

80-1904  (C.  C.  A.,  4th  Cir.),  67  C.  C.  Co.,  130  Fed.  703-1904,  at  p.  705  (C.  C. 
A.  348-362.  A.  7th  Cir.). 


388  Trade-Makks  —  General  Principles 

Radical  distinctions  have  been  made  by  various  courts  be- 
tween pure  trade-mark  cases  and  cases  under  the  general  rules 
of  unfair  competition.  It  has  been  said  that  a  trade-mark  is 
protected  on  the  ground  of  property  right,  while  relief  in  other 
cases  of  unfair  competition  is  based  upon  fraud;  and  upon  this 
supposed  distinction,  important  differences  between  the  two 
classes  of  cases,  as  to  proof  and  remedy,  have  been  built  up.^"* 
We  believe  distinctions  of  this  sort  will  in  time  be  abandoned  and 
in  both  classes  of  cases  courts  will  compensate  the  plaintiff  by  an 
award  of  damages  against  the  defendant  because  he  has  com- 
mitted a  tort.  The  difficulty  in  the  way  of  doing  this  is  the  rule  of 
equity  that  no  damages  are  awarded  by  that  court,  such  relief 
being  a  prerogative  of  the  law  courts  only. 

From  the  beginning,  however,  it  has  been  recognized  that,  if  a 
trade-mark  is  property,  it  is  property  of  a  peculiar  kind,  and  that 
it  is  subservient  to  the  good-will  of  the  business.  The  gist  of  the 
wrong  is  a  tort,  viz.,  the  deception  of  purchasers  by  means  of 
the  use  or  simulation  of  another's  mark,  and  the  consequent 
diversion  of  his  trade.  Thus,  in  the  first  leading  case  on  trade- 
marks m  the  U.  S.  Supreme  Court,  Canal  Co.  v.  Clark,  13  Wall. 
3 1 1 ,  it  is  said :  "  *  *  *  in  all  cases  where  rights  to  the  exclusive 
use  of  a  trade-mark  are  invaded,  it  is  invariably  held  that  the 
essence  of  the  wrong  consists  in  the  sale  of  the  goods  of  one  manu- 
facturer or  vendor  as  those  of  another,  and  that  it  is  only  when 
this  false  representation  is  directly  or  indirectly  made  that  the 
party  who  appeals  to  a  court  of  equity  can  have  relief."  ^^ 

''It  is  the  business  which  is  to  be  protected,  not  the  trade-mark 
as  a  mere  collocation  of  words  or  symbols."  ^^ 

5^  Gray,  C.  J,,  in  Sharpless  Co.  v.  of  a  property  right,  but  of  a  tort  com- 

Lavjrence,  213  Fed.  423,  426  (C.  C.  A.,  mitted  by  the  defendant,  in  that  his 

3d  Cir.    1914),   said:   "In  theory,   a  conduct  has  been  unlawful  by  reason 

technical   trade-mark,   like   a   patent  of    the    consequential   injury   to    the 

right,  is  a  species  of  property,  and  plaintiff." 

when  it  is  invaded  or  appropriated,  the         "  See,  also,  Metcalf  v.  Hanover  Star 

owner  thereof  is  entitled,  not  only  to  Milling   Co.,   204   Fed.   211;   Italian 

protection  from  further  trespass,  but,  Swiss  Colony  v.  Italian  Vineyard  Co., 

to  the  recovery  of  the  profits  issuing  158  Cal.  252,   110  Pac.  913;  North- 

therefrom,  as  incident  to  and  a  part  of  western   Knitting   Co.   v.   Garon,    112 

his  property  right.    In  suits  for  unfair  Minn.  321,  128  N.  W.  288. 
competition,  on  the  other  hand,  the  ^^  Thomas  G.  Carroll  &  Son  Co.  v. 

complaint  is  not  of  an  appropriation  Mcllvaine  &  Baldwin,  171  Fed.  at  129. 


Difference  of  Degree  and  Method  of  Proof      389 

''It  is  to  be  regretted,  that  sharp  distinction  was  ever  drawn 
between  that  trespass  on  property  rights  called  trade-mark  in- 
fringement, and  the  exactly  similar  trespass  commonly  spoken  of 
as  unfair  competition."  ^^ 

In  Cohen  v.  Nagle,^^  the  court  by  Loring,  J.,  after  remarking 
that  a  difference  of  opinion  exists  as  to  whether  there  is  a  right 
of  property  in  words  used  as  a  trade-mark  or  trade-name  (e.  g., 
"Keystone"  cigars),  says:  ''But  whether  it  is  or  is  not  correct  to 
say  that  such  a  plaintiff  has  property  in  such  a  word  is  not  of 
consequence.  If  he  has  a  right  of  property  in  such  a  word,  this 
right  of  property  results  from  his  right  to  prevent  others  from  us- 
ing it.  His  right  to  prevent  others  from  using  it  does  not  result 
from  his  property  in  it." 

§  199.  Difference  Between  Trade-Marks  and  Trade-Names 
not  one  of  Underlying  Principle,  but  of  Degree  and  Method  of 
Proof.  —  The  discussion  of  this  subject  in  the  following  cases  would 
seem  to  represent  the  sounder  modern  theory  and  the  prevailing 
trend  of  opinion.  The  view  taken  by  these  courts  is  to  be  found  in 
the  statement,  contained  in  the  opinion  in  the  last  mentioned  case 
that  the  differences  between  "trade-mark"  and  "unfair  competi- 
tion" cases  relate  "not  to  the  underlying  principle  but  to  the 
methods  and  degrees  of  proof  required  to  enforce  the  principle." 

"The  entire  substantive  law  of  trade-marks  (excepting  statutory 
provisions  and  construction)  is  a  branch  of  the  broader  law  of 
unfair  competition.  The  ultimate  offence  always  is  that  de- 
fendant has  passed  off  his  goods  as  and  for  those  of  the  complain- 
ant. Capewell  Horse  Nail  Co.  v.  Moonetj,  (C.  C.  A.  2,)  172  Fed.  826, 
97  C.  C.  A.  248;  Elgin,  etc.,  Co.  v.  Illinois  Watch  Co.,  179  U.  S. 
665,  674,  21  Sup.  Ct.,  270,  45  L.  Ed.,  365.  More  or  less  confusion 
has  arisen  because  it  happened  that  the  specific  offense  and  the 
specific  rule  were  recognized  and  a  body  of  law  grew  up  concern- 
ing the  same  before  the  broader  and  inclusive  offense  was  recog- 
nized and  defined;  but  this  does  not  prevent  proper  classification 
after  both  are  understood.  *  *  *  Not  so,  regarding  a  trade- 
mark and  the  right  to  protection  against  unfair  competition; 
these  rights  are  only  incidental  to  an  existing  business;  they  can- 
not be  independently  injured  or  suffer  damages;  they  do  not 

"  Thaddeus  Damds  Co.  v.  Davids,  190         '^  190  Mass.  4-18. 
Fed.  285-287,  Southern  Dist.  N.  Y., 
Hough,  J. 


390  Trade-Marks  —  General  Principles 

create  any  monopoly  in  the  article  itself;  there  can  be  no  damage 
in  connection  with  violation  of  these  rights,  except  as  there  is 
injury  to  the  business  and  good-will."  ^^ 

a*  :4c  *  fpj^g  question  whether  or  not  a  trade-mark  is 
property  has  often  been  mooted.  Lord  Langdale,  in  Perry  v. 
Truefitt,  6  Beav.  73:  'I  own  it  does  not  seem  to  me  that  a 
man  can  acquire  a  property  merely  in  a  name  or  mark.'  Vice- 
Chancellor  Sir  W.  Page  Wood,  in  Collins  Co.  v.  Brown,  3  K.  &  J. 
423 : '  It  is  now  settled  law  that  there  is  no  property  whatever  in  a 
trade-mark.'  Lord  Herschell,  in  Reddaway  v.  Banham,  A.  C. 
(1896),  199:  'I  doubt  myself  whether  it  is  accurate  to  speak  of 
there  being  property  in  a  trade-mark.'  On  the  other  hand,  the 
books  are  full  of  cases  in  which  by  implication  or  direct  statement 
it  is  declared  that  trade-marks  are  property.  But  the  dispute  is 
only  apparent;  the  minds  of  the  various  courts  are  found  to  be  in 
accord  when  the  basis  of  the  cause  of  action  and  the  reason  for 
granting  injunctive  relief  are  considered."  ^^ 

It  is  believed  that  the  true  basis  of  actions  for  unfair  competition 
as  well  as  for  infringement  of  a  trade-mark  is  that  of  tort.  Thp  fact 
that  this  tort  does  not  fit  exactly  any  of  the  established  definitions 
does  not  challenge  the  legality  of  the  cause  of  action.  It 
is  a  proof  that  equity  courts  of  to-day  are  able  and  willing  to 
enforce  the  observance  of  the  standards  of  fairness  which  prevail 
in  the  community. 

^*  G.  &  C.  Merriam  Co.  v.  Saalfield,  *"  Hanover  Star  Milling  Co.  v.  Allen 
198  Fed.  369,  at  372-3;  376,  C.  C.  A.,  &  Wheeler  Co.,  208  Fed.  513-515;  C.  C. 
6th  Cir.,  Dennison,  J.  A.,  7th  Cir.,  by  Baker,  G.  J. 


CHAPTER  XIV 
What  May  be  Appeopriated  as  a  Trade-Mare: 

Section  200.  The  general  principle. 

201.  Descriptive  words  not  appropriable. 

202.  Invented  or  fanciful  words. 

203.  Common  words  used  in  an  arbitrary  sense. 

204.  Words  indicating  quality,  superiority,  etc. 

205.  Geographical  or  place  names. 

206.  Personal  or  family  names. 

207.  Names  of  patented  articles. 

208.  Foreign  words. 

209.  Letters  of  the  alphabet. 

210.  Numerals. 

§  200.  The  General  Principle.  —  Since  the  office  of  a  trade-mark 
is  to  identify  or  authenticate  the  goods  as  made  or  sold  by  a  par- 
ticular trader,  it  must,  for  that  purpose,  possess  distinctiveness. 
It  need  not  necessarily  be  inherent  in  the  word  or  mark,  but 
may  have  been  acquired  by  association.  A  trader  cannot  appro- 
priate to  his  exclusive  use  words  or  symbols  which  (in  the  appU- 
cation  he  is  to  make  of  them)  are  pubhc  property.  The  right 
of  others  to  use  descriptive  words  in  their  ordinary  and  usual 
meaning  must  not  be  restricted.  No  sign  or  form  of  words  may  be 
appropriated  as  a  valid  trade-mark,  for  use  in  its  primary  meaning 
which,  from  the  nature  of  the  fact  conveyed  by  that  primary 
meaning,  others  may  employ  with  equal  truth,  and  with  equal 
right,  for  the  same  purpose.^ 

One  cannot,  therefore,  take  as  a  trade-mark  for  use  in  its  or- 
dinary and  usual  meaning  "a,  generic  name,  or  a  name  merely  de- 
scriptive of  an  article  of  trade,  of  its  qualities,  ingredients  or 
characteristics."  ^  The  general  principle  is  clear,  but  its  applica- 
tion presents  questions  of  difficulty,  and  the  numerous  decisions 
of  the  courts  are  not  always  harmonious.     For  convenience  of 

•  This  is  a  slight  modification  of  the      quoted  in  Canal  Co.  v.  Clark,  13  WaH. 
language  used  by  Judge  Duer  in  the      at  323,  and  elsewhere, 
early  and  leading  case  of  Amoskeag  ^  Canal    Co.    v.    Clark,    13     Wall. 

Mfg.  Co.  V.  Spear,  2  Sandf.  599,  and      311. 

391 


302      What  May  be  Appropriated  as  a  Trade-]\Iark 

treatment,  the  cases  are  classified  under  several  heads  in  this 
chapter;  but  the  principle  controlling  throughout  is  as  above 
stated. 

§  201.  Descriptive  Words  not  Appropriable.  —  Words  that  de- 
scribe the  goods  or  some  feature  of  them  are  not  available  for 
trade-marks.  Such  words  in  trade-mark  law  are  termed  ''de- 
scriptive." It  is  often  difficult  to  draw  the  line  between  words  that 
are  thus  descriptive  to  such  a  degree  that  they  may  not  be  appro- 
priated by  a  particular  trader,  and  those  that,  although  they  may 
be  considered  to  possess  some  element  of  description,  are  still 
sufficiently  arbitrary  or  fanciful  to  be  appropriable  as  trade-marks 
despite  the  general  right  of  others  to  use  them  in  describing  or 
designating  their  goods.  Words  of  this  latter  kind  in  trade-mark 
law,  are  called  "suggestive."  This  term  aptly  indicates  the 
distinction  between  such  words  and  those  that  are  more  definitely 
descriptive.  To  be  condemned  as  "descriptive,"  a  word  need  not 
be  clear  or  accurate  in  its  description;  nor  on  the  other  hand,  to 
be  approved  as  valid  in  this  respect,  is  it  necessary  that  a  word 
should  be  utterly  devoid  of  aptitude  or  meaning.  It  is  enough 
that  it  leaves  open  to  every  one  all  meanings  of  the  word  which 
are  really  needed  for  public  use  as  descriptive  of  quality  or  char- 
acter. 

To  illustrate  this  principle  the  following  instances  are  given  of 
words  that  have  been  held  to  be  descriptive  and  not  open  to  ex- 
clusive appropriation: 

"Ruberoid"  (for  roofing  material).^ 

"Toothache  Gum"  (for  a  viscous  substance  to  be  used  as  a  cure 
for  toothache).^ 

"Crystallized  Egg"  (preserved  by  a  secret  process).^ 

"Aluminum"  (for  an  article  partly  composed  of  aluminum).^ 

"Brilliant"  (for  flour;  to  distinguish  bright  from  darker  flour) .^ 

"Computing"  (scales).^ 

"Elastic  Seam"  (for  drawers).^ 

3  Standard  Paint   Co.   v.    Trinidad         ^  Computing  Scale  Co.  v.  Standard 

Asphalt  Co.,  220  U.  S.  446.  CompiUing  Scale  Co.,  118  Fed.  965. 

«  Devlin  v.  McLeod,  135  Fed.  164.  « Rice-Stix  Dry  Goods  Co.  v.  J.  A. 

^Lamont  v.  Leedij,  88  Fed.  72.  Scriven  Co.,  165  Fed.  639  (C.  C.  A.); 

« American  Washboard  Co.  v.  Sagi-  Newcomer  &  Lewis  v.  Scriven  Co.,  168 

naw  Mfg.  Co.  (C.  C.  A.),  103  Fed.  281.  Fed.  621;  Scriven  v.  North,  124  Fed. 

'  Snuers  Milling  Co.  v.  Kehlor  Flour  894,  134  Fed.  366  (C.  C.  A.). 
Mills  Co.,  39  App.  D.  C.  535. 


Descriptive  words  not  Appropriable  393 

"Flare  Front"  (for  automobile  lamps). ^° 

"Inter-phone"  (for  telephone  switching  apparatus)." 

"Keepclean"  (for  brushes). ^^ 

"No  Wash  Up  (lithographing  plates,  etc.).^^ 

"Thermogene"  (for  medicated  cotton  wadding). ^^ 

"Dridip"  (for  powder  used  to  destroy  vermin  on  animals). ^^ 

"The  Velvet  Kind"  (for  ice-cream). ^« 

"Roof  Leak"  (for  roof  paint). ^^ 

"Rubberset"  (for  brushes). ^^ 

"Faultless"  (for  bread). ^^ 

"C.  &  C."  (for  capsules). 20 

"Security"  (for  automobile  tire  tread). ^^ 

"Vacuum  Cup"  (for  automobile  tires). ^^ 

"Oil  of  Pine"  (for  medicine). ^^ 

"Spearmint"  (for  chewing  gum).-^ 

"Rubberset"  (for  brushes). ^^ 

The  following  words  on  the  other  hand,  are  examples  that  have 
been  held  to  be  "suggestive"  rather  than  descriptive  and  there- 
fore are  valid  trade-marks : 

"No-To-Bac"  (medicine  to  cure  tobacco  habit). ^^ 

' '  Cedarine ' '  (for  furniture  polish) . "" 

"  Rushmore  v.  Manhattan  Screw  &  ^^  Temple  v.  Gordon,  159  Pac.  983. 

Stamping  Works,  163  Fed.  939  (C.  C.  ^^  Planten  v.  Gedne^j,  221  Fed.  281. 

A.).  ^^  Buffalo  Rubber  Mfg.  Co.  v.  Batavia 

11  In   re    Western   Electric   Co.,   39  Rubber  Co.,  153  N.  Y.  Supp.  779. 
App.  D.  C.  420.  22  Pennsylvania  Rubber  Co.  v.  Dread- 

^^  Florence  Mfg.  Co.  v.  Dowd,  171  naught  Tire  &  Rubber  Co.,  225  Fed. 

Fed.  122;  id.,  178  Fed.  73  (C.  C.  A.).  138. 

13  Ault  &  W.  Co.  V.  Cheshire,  191  23  L^ach  v.  Scarff,  188  Fed.  446. 
Fed.  741.  24  pf^j     Wrigley,  Jr.,  Co.  v.  Grove 

14  The  Thermogene  Co.,  Ltd.,  v.  The  Co.,  161  Fed.  885;  Same  v.  Same,  183 
Thermogine  Co.,  Inc.,  234  Fed.  69  Fed.  99  (C.  C.  A.  2d  Cir.).  See  Wm. 
(C.  C.  A.).  Wrigley,  Jr.,  Co.  v.  L.  P.  Larson,  Jr., 

"  Ungles-Hoggette  Mfg.  Co.  v.  Farm-  Co.,  195  Fed.  568,  simulation  of  dress 

ers'  Hog  &  Cattle  Powder  Co.,  232  Fed.  in   connection   with   use  of   "Pepto- 

116.  mint." 

18  Chapin-Sacks  Mfg.  Co.  v.  Hendler  ^s  Rubber  &  Celluloid  H.  T.  Co.  v. 

Creamery  Co.,  231  Fed.  550.  Rubber   Bound  Brush   Co.,   81   N.  J. 

"Sears,  Roebuck  &  Co.  v.  Elliott  Eq.  419;  aff'd  id.  519,  88  Atl.  210. 

Varnish  Co.,  232  Fed.  588.  ^e  Sterling  Remedy  Co.  v.  Eureka  C. 

18  Rubber  &  Celluloid  Harness  Trim-  &M.  Co. ,80  Fed.  105. 

ming  Co.   v.   F.   W.   Devoe   &  C.   T.  ^^  Allen  v.    Walker  &   Gibson,  235 

Raynolds  Co.,  233  Fed.  150.  Fed.  230. 


394      What  May  be  Appropriated  as  a  Trade-Mark 

"Teller"  (for  recording  safes). ^^ 

"Ideal"  (for  brushes). 29 

"Wearever"  (for  cooking  utensils). ^° 

* '  Alderny ' '  (oleomargarine) .  ^  ^ 

"Elastic"  (bookcases,  etc.).^^ 

"Saponifier"  (concentrated  lye).'' 

"Hygeia"  (distilled  water). '^ 

"Carroms"  (for  a  game). ^'^ 

"Celery  Compound"  (for  beverage).'^ 

"Sunshine"  (for  stoves). ^^ 

"Virgin  Leaf "  (for  tobacco).'^ 

"Abricotine"  (liqueur).'^ 

"Coca-Cola"  (drink)."" 

"Holeproof"  (hosiery).''^ 

" Pepto-Mangan "  (medicine). "^ 

" Bromo-Caff eine"  (medicine)."' 

"Anti-washboard"  (soap)."" 

"Cough  Cherries"  (medicated  confection). ^^ 


28  Automatic  Recording  Safe  Co.  v. 
Bankers  Registering  Safe  Co.,  224  Fed. 
506. 

^^  Hughes  v.  Alfred  H.  Smith  Co., 
209  Fed.  37. 

30  Ahiminum  Cooking  Utensil  Co.  v. 
National  Aluminum  Works,  226  Fed. 
815. 

^^  Lauferty  v.  Wheeler,  11  Abbott's 
N.  C.  220. 

32  Globe-Wernicke  Co.  v.  Brown,  121 
Fed.  185. 

"  Pennsylvania  Salt  Mfg.  Co.  v. 
Myers,  79  Fed.  87. 

^*  Consolidated  Ice  Co.  v.  Hygeia 
Distilled  Water  Co.,  151  Fed.  10  (C. 
C.  A.). 

35  Ludington  Novelty  Co.  v.  Leonard, 
127  Fed.  155,  affg.  119  Fed.  937  (whicii 
see)  and  see  Williams  v.  Mitchell,  106 
Fed.  168. 

3*  Wells  &  Richardson  Co.  v.  Siegel, 
Cooper  &  Co.,  106  Fed.  77  (C.  C.  111. 
1900). 

3'  Reading  Stove   Works  v.   S.   M. 


Howes  Co.,  201  Mass.  437,  87  N.  E. 
751. 

38  American  Tobacoo  Co.  v.  Polacsek, 
170  Fed.  117  (1909). 

39  Gamier  v.  Rossman,  195  Fed.  175; 
Rossman  v.  Gamier,  211  Fed.  401. 

*°  Coca-Cola  Co.  v.  Nashville  Syrup 
Co.,  200  Fed.  153;  Coca-Cola  Co.  v. 
American  Druggists'  Syndicate,  200 
Fed.  107.  See  also  Coca-Cola  Co.  v. 
Koke  Company  of  America,  6  Trade- 
Mark  Rep.  349;  Coca-Cola  Co.  v. 
Nashville  Syrup  Co.,  215  Fed.  527. 

*'  Holeproof  Hosiery  Co.  v.  Wallach 
Bros.,  167  Fed.  373,  affd.,  S.  C,  172 
Fed.  859  (C.  C.  A.),  final  hearing,  190 
Fed.  606. 

*2  M.  J.  Breitenhach  Co.  v.  Spang- 
enbcrg,  131  Fed.  160. 

*3  Keasbey  v.  Brooklyn  Chemical 
Works,  142  N.  Y.  467. 

**  O'Rourke  v.  Central  City  Soap  Co., 
26  Fed.  576. 

*''  Stoxighton  v.  Woodard,  39  Fed. 
902  (words  "not  properly  merely  de- 


Descriptive  Words  not  Appropriable  395 

"Lightning"  (hay  knives). ^^ 

"Fibre  Chamois"  (fabric,  somewhat  resembUng  chamois 
leather,  for  interhning  dresses)/^ 

"SHced  Animals"  (a  game  or  puzzle). ^^ 

"Insurance  Oil"  (illuminating  oil).'*^ 

"Red  Cross"  (tooth  brushes).^" 

"Magnetic  Balm"  (medicine). ^^ 

"Vkgin  Leaf"  (tobacco).^^ 

It  will  be  apparent  from  these  illustrations  that  no  hard  and 
fast  line  can  be  drawn  between  the  two  classes  of  words.  It  is 
desirable,  however,  to  formulate  some  general  rule  to  serve  as  a 
test  of  descriptiveness  in  the  sense  above  indicated.  It  was  said 
in  a  New  York  case  that,  to  condemn  a  term  as  descriptive, 
"its  description  must  import  information  as  to  the  general  char- 
acteristics and  composition  of  the  article  to  which  it  applies."  ^^ 

A  better  practical  test  would  perhaps  be  (using  language  of 
Rapallo,  J.,^^)  to  inquire  whether  the  giving  to  the  plaintiff  of  the 
right  to  use  the  name  as  his  trade-mark  in  any  way  ''restricts 
others  from  properly  describing  similar  articles  produced  by  them.'' 
Or,  as  expressed  in  an  early  leading  case:  ^^  —  A  trader  "has  no 
right  to  appropriate  a  sign  or  symbol  which,  from  the  nature  of 
the  fact  it  is  used  to  signify,  others  may  employ  with  equal  truth, 
and  therefore  have  an  equal  right  to  employ  for  the  same  purpose." 
"Hygieniques"  as  apphed  to  suspenders  was  held  not  descrip- 

scriptive  of  the  qualities  of  the  thing  association  of  ideas,  suggest  the  notion 

manufactured  and  sold,  but  are  to  a  of  safety,  it  is  not  synonymous  with 

large  extent  arbitrary  or  fanciful").  safe,  nor  can  it  be  said  to  describe  any 

*^  Hiram  Holt  Co.  v.  Wadsworth,  41  possible  quality  of  oil,     *     *     *    but 

Fed.  34.  'insurance   oil'   is   itself  meaningless 

"American   Fibre    Chamois  Co.  v.  *    *    *". 

De  Lee,  67  Fed.  329  ("If  said  words,  as  ^°  Loonen  v.  Deitsch,  189  Fed.  487. 

here  combined,   have    any   sense,   as  ^^  Smith  v.  Sixbury,  25  Hun,  232. 

descriptive  of  the  class  of  goods  in  ^^  American  Tobacco  Co.  v.  Palacsek. 

question,  it  is  not  so  pronounced,  ob-  170  Fed.   117   (name  not  considered 

vious  and  usual  as  to  make  said  com-  equivalent  to  Virginia) . 

bined  words   unfit,   inappropriate  or  ^^  Stern  v.  Barrett  Chemical  Co.,  29 

misleading  as  a  name,  sign  or  mark  of  Misc.  (N.  Y.)  609,  citing  several  N.  Y. 

origin,"  etc.).  cases  and  sustaining  "Roachsault"  as 

^*  Selchow  V.  Baker,  93  N.  Y.  59.  a  good  trade-mark. 

«  Insurance  Oil  Tank  Co.  v.  -Scott,  33  ^*  Selchow  v.  Baker,  93  N.  Y.  59,  64. 

La.  Ann.  946,  1881,  "While  the  word  ^^  Amoskeag    Mfg.    Co.    v.    Spear, 

'insurance'  may,  by  some  process  of  2  Sandf.  599. 


39()      What  May  be  Appropriated  as  a  Trade-Mark 

tive  in  such  a  sense  as  to  prevent  its  appropriation,  as,  for  example 
the  word  "elastic"  would  be.  "Hygieniques,"  Barrett,  J.,  says, 
"is  suggestive  of  the  good  quality  of  the  suspenders  and  of  its 
usefulness;  but  it  docs  not  directly  characterize  the  article,  nor 
the  methods  which  tend  to  make  it  healthful.  At  the  outside, 
such  word  is  descriptive  only  in  a  modified  or  indirect  sense,  and 
it  does  not  monopolize  a  part  of  the  language  essential  or  appro- 
priate to  describe  the  article,  it  may  become  the  subject  of  a 
valid  trade-mark.  Words  which  are  but  inferentially  or  remotely 
descriptive,  indicating  neither  origin  nor  ownership,  but  merely 
some  special  quality  or  peculiarity  of  the  article  itself,  may  prop- 
erly be  regarded  as  fanciful  or  arbitrary  in  the  legal  sense."  ^^ 
Other  examples  of  words  not  appropriable  as  trade-marks  are 
given  in  the  note." 

§  202.  Invented  or  Fanciful  Words.  —  In  most  cases  there  is  no 
question  about  words  invented  for  the  sole  purpose  of  use  as 
trade-marks,  being  good  trade-marks.  It  is  not  necessary  that 
such  words  should  be  wholly  arbitrary  or  contain  no  suggestion  of 
any  meaning.  Here  again  the  line  of  demarcation  is  not  always 
easy  to  draw.  The  following  are  examples  of  words  that  have  been 
sustained  as  trade-marks,  and  classified  as  invented  or  fanciful 
words : 

=«  Bailly  v.  Nashawannuck  Mfg.  Co.,  hops),  American  Bremng  Co.  v.  Bien- 

10  N.  Y.  Supp.  224.  ville  Brewery,  153  Fed.  615;  "  Non-fluid 

"  Words  held  descriptive,  and  not  Oil,"  A^.  Y.  &  N.  J.  Lubricant  Co.  v. 

available  as  strict  trade-marks:  0.  W.  Young,  etc.,  77  N.  J.  Eq.  321; 

"French     Tissue"     (dressing     for  "Gold  Medal"  (saleratus),  Taylor  v. 

corns),  Draper  v.  Skerrett,   116  Fed.  Gillies,  59  N.  Y.  331  (condemned  as 

206;  "Steel-shod"  (shoes),  Brenwanv.  descriptive  if  the  product  had  been 

Emery-Bird-Thayer    D.    G.    Co.,    108  awarded  a  gold  medal,  and  as  decep- 

Fed.  624  (C.  C.  A.);  "Elastic  Seam"  tive  if  it  had  not);  "Indurated  Fibre" 

(drawers),  Rice-Stix  Dry  Goods  Co.  v.  (wood  pulp  wares),   Indurated  Fibre 

J.  A.  Scriven  Co.,  165  Fed.  639  (C.  C.  Co.  v.  Amoskeag  Indurated  F.  W.  Co., 

A.);    "Keepclean"    (tooth    brushes),  37  Fed.  695  (1889);  (words  said  to 

Florence  Mfg.  Co.  v.  /.  C.  Dowd  &  Co.,  denote,   in   a   measure   at  least,   the 

178  Fed.  73  (C.  C.  A.);  "Gall  Cure"  quaUty,  ingredients  and  characteris- 

(medicine),    Bickmore    G.    C.    Co.   v.  tics  of  the  articles  produced ;"  Microbe 

Karns  Mfg.  Co.,   126  Fed.  573    (see  killer"  {med\c\x\Q) ,  Alff  v .  Radham,  17 

same  case,  134  Fed.  833);  "American  Tex.  530;  "Brilliant"  (for  flour,  dis- 

Girl"  (shoes),  Wolf  Bros.   &  Co.  v.  tinguishing  it  from  a  darker  kind  of 

Hamilton-Brown  Shoe  Co.,   165  Fed.  flour),  Sauers  Milling  Co.  v.  Kehlor  F. 

413  (C.  C.  A.);  "Bohemian"   (beer;  M.  Co.,  39  App.  D.  C.  535. 
indicating  that  it  is  made  of  Bohemian 


Common  Words  Used  in  Arbitrary  Sense 


397 


"Valvoline"  (lubricating  oil).^^ 

"Celluloid."  ^3 

''Momaja"  (coffee).^" 

"Cottolene"  (substitute  for  lard).^^ 

"Saponifier"  (concentrated  lye).^^ 

"Cuticura"  (soap).^^ 

'^Uneeda"  (crackers)  .^^ 

''Carbolineum"  (kind  of  paint)  .^^ 

"Ceresota"  (flour). ^^ 

"Argyrol"  (antiseptic)  .^^ 

§  203.  Common  Words  Used  in  an  Arbitrary  Sense.  —  A  word 
in  common  use  but  applied  to  a  product  in  an  arbitrary  or  fanciful 
sense,  may  be  a  good  trade-mark.    For  example: 

''Club  Cocktails"  (cocktail). ''« 

''Congress  Water"  (mineral  water) .^^ 

"Parabola"  (needles).7o 

"Eagle"  (snuff)." 

"Radium"  (silk)." 

"Tea  Rose"  (flour)." 

"Red  Cross"  (tooth  brushes) J^ 

"Ideal"  (hair  brush) .75 

' '  Keystone' '  (grease)  .^^ 


58  Leonard  v.  White's  G.  L.  Co.,  38 
Fed.  922;  Leonard  v.  Wells,  L.  R.  26 
Ch.  Div.  288.  But  see  Matter  of  Hors- 
burgh,  53  L.  J.  Ch.  237. 

^^  Celluloid  Mfg.  Co.  v.  Read,  47 
Fed.  712,  and  see  Celluloid  Mfg.  Co.  v. 
Cellonite  Mfg.  Co.,  32  Fed.  94. 

8"  American  Grocery  Co.  v.  Sloan,  68 
Fed.  539. 

"A''.  K.  Fairbank  Co.  v.  Central 
Lard  Co.,  64  Fed.  133. 

^^Pennsylvania  Salt  Mfg.  Co.  v. 
Meyers,  79  Fed.  87. 

«'  Potter  Drug  &  Chemical  Co.  v. 
Miller,  75  Fed.  656. 

8^  National  Biscuit  Co.  v.  Baker,  95 
Fed.  135. 

«*  Avermrius  v.  Kornely,  139  Wis. 
247. 


88  Northwestern  C.  M.  Co.  v.  Mauser 
&  Cressman,  162  Fed.  1004. 

"  Barnes  v.  Pierce,  164  Fed.  213. 
«8  Heublein  v.  Adams,  125  Fed.  782. 

89  Congress  Co.  v.  High  Rock  Co.,  45 
N.  Y.  291. 

'0  Roberts  v.  Sheldon,  8  Biss.  398. 

"  De  Voe  Snuff  Co.  v.  Wolff,  206 
Fed.  420  (C.  C.  A.). 

->^  Eiseman  v.  Schiffer,  157  Fed.  473. 

"  Metcalf  V.  Hanover  Star  Milling 
Co.,  204  Fed.  211;  Hanover  Star  Mill- 
ing Co.  V.  Allen  &  Wheeler,  208  Fed. 
513. 

7"  Loonen  v.  Dei.sch,  189  Fed.  487, 
C.  C,  N.  Y.  1911. 

"  Hughes  v.  Alfred  H.  Smith  Co., 

205  Fed.  302;  affd.  209  Fed.  37. 

'8  Buzby  V.  Keystone  Oil  &  Mfg.  Co., 

206  Fed.  136, 


398      What  May  be  Appropriated  as  a  Trade-Mark 

"Metropolitan"  (chocolate)." 

"White  House"  (coffee).^^ 

"Angostura"  (bitters) .^^ 

"Carmel"  (wine).^" 

"Hunyadi"  (mineral  water) .^* 

"Marguerite"  (tooth  brushes) .^^ 

§  204.  Words  Indicating  Quality,  Superiority,  etc.  —  The  gen- 
eral rule  is  that  words  that  ordinarily  or  directly  indicate  or  imply 
high  quality,  excellence,  superiority,  popularity,  etc.,  as  belonging 
to  the  goods,  are  not  appropriable  as  trade-marks.  This  rule, 
however,  must  be  taken  subject  to  some  qualifications,  as  will  be 
seen  by  the  examples  which  indeed  indicate  that,  in  a  number  of  in- 
stances, the  same  word  has  been  sustained  as  a  trade-mark  in 
some  cases  and  rejected  in  Others.  The  following  are  words  which 
have  been  held  not  available  as  trade-marks  on  the  ground  that 
they  denote  quality,  excellence,  etc. : 

"Gold  Medal"   (saleratus).^^ 

"Royal"  (baking  powder) .^^ 

"Imperial"  (beer).^^ 

The  following  words,  however,  have  been  sustained  as  trade- 
marks : 

"Nickel-In"  (cigars).^^ 

"Pride"  (cigars).^^ 

"Marvel"  (fiour).^^ 

"Kaiser"  (beer).^^ 

"Queen"  and  "Queen  Quahty"  (shoes) .9" 

Referring  to  words  like  "Kaiser,"  "Royal,"  "Monarch,"  etc., 
Lurton,  C.  J.,  says:  — 

"  Reymer  &  Bros.  Inc.  v.  Huyler's,  ^4  Royal    Baking    Powder    Co.    v. 

100  Fed.  83.  Raymond,  70  Fed.  376. 

"*  Dmncll-Wright  Co.  v.  Co-operative  ^^  Beadleston    &     Woerz    v.    Cooke 

Supply  Co.,  148  Fed.  242,   155  Fed.  Brewing  Co.,  74  Fed.  229. 

909.  «« Schendel  v.  Silver,  63  Hun  (N.  Y.), 

"4.  Bauer  &  Co.  v.  Siegert,   120  330. 

Fed.  81.  8'  Hier  v.  Abrahams,  82  N.  Y.  519. 

8"  Jewish  Colonization  Association  v.  **  Listman  Mill  Co.  v.  William  List- 
Solomon,  154  Fed.  157.  man  Millin-g  Co.,  88  Wis.  334. 

^^  Saxlehner  v.  Eisner  &  Mendelson  ^^J.  P.  Blatz  Brew.  Co.  v.  Kaiser- 
Co.,  179  U.  S.  19.  brauerei,  Beck  &  Co.,  74  Fed.  222. 

82  Deitsch  v.  Gibson,  198  Fed.  410.  ^  Thomas  G.  Plant  v.  May  Mercan- 

^^  Taylor  v.  Gillies,  59  N.  Y.  331.  iik  Co.,  153  Fed.  229. 


Geographical  ok  Place  Names  399 

''But  these  cases  rest  upon  the  pecuHar  and  specific  character 
of  the  names  as  adopted  as  trade-marks  being  names  not  primarily 
descriptive  of  kind,  quality  or  class,  when  applied  to  inanimate 
things,  and  only  standing  in  a  purely  figurative  way,  for  excel- 
lence or  quality  or  grade  or  class.  Not  being  descriptive  words, 
they  were  capable  of  adoption  as  trade-names."  °^ 

§  205.  Geographical  or  Place  Names.  —  This  section  is  devoted 
merely  to  a  discussion  of  geographic  names  used  as  technical  or 
pure  trade-marks,  and  not  as  trade-names.  As  to  the  use  of  such 
names  as  trade-names  see  the  chapter  entitled  "Geographical 
Names."  Geographical  names  are  ordinarily  not  available  as 
trade-marks,  since  they  are  words  in  the  public  domain  and  open 
to  general  use.  Yet  these  names  on  merchandise  often  convey 
a  meaning  not  related  to  a  special  place  and  at  the  same  time 
serve  all  the  uses  of  a  trade-mark.  Geographical  names  used  as 
trade-marks  in  this  way  for  more  than  ten  years  prior  to  Feb- 
ruary 20,  1905,  may  be  registered  under  the  United  States  Trade- 
Mark  Act,  section  5.^2 

One  of  the  earliest  American  cases  on  geographical  words  as 
trade-marks  is  Canal  Co.  v.  Clark,  13  Wall.  (U.  S.)  311,  (Lacka- 
wanna Coal) .    The  court  there  says :  — 

"And  it  is  obvious  that  the  same  reasons  which  forbid  the 
exclusive  appropriation  of  generic  names  or  of  those  merely 
descriptive  of  the  article  manufactured  and  which  can  be  employed 
with  truth  by  other  manufacturers,  apply  with  equal  force  to  the 
appropriation  of  geographical  names,  designating  districts  of 
country.  Their  nature  is  such  that  they  cannot  point  to  the 
origin  (personal  origin)  or  ownership  of  the  article  of  trade  to 
which  they  may  be  applied.  They  point  only  at  the  place  of  pro- 
duction, not  to  the  producer,  and  could  they  be  appropriated  ex- 

91  Compiding  Scale  Co.  v.  Standard  ized  by  persons  who  acquired  a  fac- 

Computing  Scale  Co.,   118  Fed.  965,  tory  site  in  Oneida,  N.  Y.,  under  the 

968.  name  "  Oneida  Game  Trap  Co."  and 

82  Oneida  Community,  Ltd.,  v.  Oneida  began  a  competing  business,  marking 

Game  Trap  Co.,  Inc.,  168  App.  Div.  its   traps   with   its    corporate   name. 

(N.  Y.)  769.     The  plaintiff,  a  manu-  The  court  held  such  acts  an  infringe- 

facturer  of  traps,  sold  them  stamped  ment  of  plaintiff's  rights  and  enjoined 

with  the  words  "  Oneida  Community "  defendant   from   using  its   corporate 

but   they   were   generally   known   as  name  or  marking  its  traps  with  the 

"  Oneida  Traps  "  or  "  Oneida  Game  word  "  Oneida." 
Traps."    The  defendant  was  organ- 


400     What  May  be  Appropriated  as  a  Trade-Mark 

clusively,  the  appropriation  would  result  in  mischievous  monopo- 
lies." 

The  rule  as  thus  stated  is  subject  to  various  exceptions.  The 
above  statement  was  written  in  1871  when  the  law  of  unfair 
competition  was  in  its  early  stages  of  development.  This  decision 
has  been  much  modified  in  the  unfair  competition  cases  that  have 
been  decided  since. 

The  following  are  examples  of  words  that  have  been  held  to  be 
invalid  as  trade-marks  because  geographical : 

"Elgin  (Watch) .»^ 

''Nubia"    (cigarettes) .9^ 

"Santa  Ana"  (butter) .^^ 

"Moline"   (flour  from  name  of  town).^' 

"Tobasco"  (pepper  sauce)  .^^ 

"Columbia"  (flour). ^^ 

"  American  Wine  Co."  ^ 

"East  Indian"  (remedy.)^ 

"Orient"   (ink  ribbons  and  carbon  paper). ^ 

"Old  Country"  (soap).^ 

Some  names  which  are  semi-geographic  in  character  have  been 
held  to  be  trade-marks  as,  for  instance : 

"Yankee"  (soap).^ 


"Metropolitan"  (chocolate).^ 

"  Elgin  Nat'l  Watch  Co.  v.  Illinois  ^^  Columbia  Mill  Co.  v.  Alcorn,  150 

Watch  Case  Co.,  179  U.  S.  665  (1901).  U.  S.  460.    And  in  Morgan  Envelope 

"Elgin"   had    been    registered   as    a  Co.  v.  Walton,  86  Fed.  605,  "Colum- 

trade-mark.      It   was   held   that   the  bia"  applied  to  tissue  or  toilet  paper 

word  was  not  a  valid  trade-mark.    It  was  held  invalid, 

might,  having  acquired  a  secondary  i  American  Wine  Co.  v.  Kohlman, 

meaning,  be  protected  on  principles  of  158  Fed.  830  (perhaps  more  properly 

unfair  competition,  although  the  court  a  trade-name  case), 

lacked   jurisdiction,   in  this   case,   to  ^  Connell  v.  Reed,  128  Mass.  477. 

administer  such  rehef.  ^  Matter  of  Crescent  Typewriter  Sup- 

«  Apollo  Bros.  V.  Perkins,  207  Fed.  ply  Co.,  30  App.  D.  C.  324. 

530  (C.  C.  A.).  "  Allen  B.  Wrisley  Co.  v.  Iowa  Soap 

9"  Los  Angeles  Creamery  Co.  v,  J.  R.  Co.,  122  Fed.  796  (C.  C.  A.). 

Newberry  Co.,  21  Cal.  App.  567  (per-  ^  Williams  v.  Adams,  8  Biss.  452 

haps  rather  a  trade-name  than  a  trade-  (the  court  remarking  that  it  was  not 

marks  case).  really  a  geographical  name). 

'"  Candee  v.  Deere,  54  111.  439.  ^  Reymer  &  Bros.  Inc.  v.  Huyler's, 

3^  Mcllhenny  v.  New  Iberia  E.  of  190  Fed.  83. 
T.  P.  Co.,  34  App.  D.  C.  430. 


Geographical  or  Place  Names  401 

The  broad  statement  made  that  a  geographical  name  can  never 
become  exclusive  property  of  the  one  who  first  uses  it  as  a  trade- 
mark/ is  subject  to  substantial  qualification.  Where  the  name 
is  arbitrarily  used  and  not  in  any  of  its  natural  meanings,  it  may 
be  adopted  as  a  trade-mark.    The  following  are  examples: 

''Paris"  (garters).^ 

''Vienna"  (bread).^ 

"German"  (chocolate).^*' 

"Italian"  (underwear). ^^  , 

"The  American  Girl"  (shoes). ^^ 

"Ethiopian"  (black  cotton  stockings).^* 

"Indian  Pond"  (for  scythe  stones). ^^ 

"Green  Mountain"  (for  scythe  stones). ^^ 

"Quinnebog"  (for  scythe  stones). ^^ 

"Lake  Huron"  (for  scythe  stones). ^^ 

"Taylor's  Persian  Thread"  (for  thread  manufactured  in  Eng- 
land). ^^ 

"Turin"  (for  patterns  of  cloths  manufactured  at  Huddersfield, 
Eng.).i9 

"Sefton"  (for  patterns  of  cloths  manufactured  at  Huddersfield, 
Eng.).2o 

"Liverpool"  (for  patterns  of  cloths  manufactured  at  Hudders- 
field, Eng.).2i 

"Philadelphia"  (for  cheese  manufactured  in  New  York).^^ 

^  Apollo  Bros.  V.  Perkins,  207  Fed.  "  Pike  Mfg.  Co.  v.  Cleveland  Stone 

530,  533  (C.  C.  A.).  Co.,  35  Fed.  Rep.  896. 

^A.  Stein  &  Co.  v.  Liberty  Garter  ^^  Pike  Mfg.  Co.  v.  Cleveland  Stone 

Mfg.  Co.,  198  Fed.  959.  Co.,  35  Fed.  Rep.  896. 

9  Fleischmann    v.    Schuckmann,    62  "  Cleveland  Stone   Co.   v.    Wallace, 

How.  Pr.  92.  52  Fed.  Rep.  431. 

1"  Walter  Baker  &  Co.  v.  Baker,  77  '^  Cleveland   Stone   Co.   v.    Wallace, 

Fed.  181.     Compare  also  Drake  Med-  52  Fed.  Rep.  431. 

icine  Co.  v.  Glessner,  68  Ohio  State,  ^^  Taylor  v.  Carpenter,  3  Story,  458, 

337,  356.  Cas.  No.  13,784;  Taylor  v.  Ta^jlor,  23 

"  Kaijser  &  Co.  v.  Italian  Silk  Un-  L.  J.  Ch.  (N.  S.)  255;  Taylor  v.  Car- 

derwear  Co.,  160  App.  Div.  (N.  Y.)  607  penter,  11  Paige,  292;  aff'd,  2  Sandf. 

(the  trade-mark  had  been  registered  Ch.  603. 

and  was  considered  good  under  the  '"  Hirst  v.  Denham,  L.  R.  14  Eq.  542. 

ten-year  clause  of  the  Federal  Act).  ^^  Hirst  v.  Denham,  L.  R.  14  Eq.  542. 

'2  Hamilton-Brown  Shoe  Co.  v.  Wolf  ^i  jjirst  v.  Denham,  L.  R.  14  Eq.  542. 

Bros.  &  Co.,  240  U.  S.  251.  ^^  International  Cheese  Co.  v.  Pheniz 

13  Hine  v.  Lart,  10  Jur.  106.  Cheese  Co.,  118  App.  Div.  499. 


402      What  May  be  Appropriated  as  a  Trade-Mark 

"Anatolia"  (for  licorice).-^ 

"Maryland  Club"  (whiskey).^' 

"Tabor"  and  "Carmel"  (for  wine  grown  in  Palestine,  none 
however  being  grown  on  the  mountains  of  those  names). ^^ 

"White  House"   (coffee).^^ 

"American  Express"  for  sealing  wax.-^'' 

"Chartreuse"  has  been  held  to  be  not  a  geographical  name,  but 
rather  the  name  of  a  monastery  which  name  followed  the  monks 
when,  being  expelled  from  France,  they  resumed  the  manufacture 
of  their  product  in  another  country."  "Angostura"  (bitters)  is  an 
example  of  a  name  originally  geographical,  but  afterwards  used 
arbitrarily,  the  name  of  the  town  where  the  product  was  first 
made  having  been  changed,  and  the  place  of  manufacture  having 
also  been  changed. ^^ 

Where  a  geographical  name  is  a  part  of  a  combination  of  words, 
the  question  is  more  complex.  Where  there  is  a  distinctive  word 
associated  with  the  geographical  words,  the  combination  may  be 
used  as  a  trade-mark  as  in  the  ease  of  "Auburn-Lynn"  shoes. ^^ 
If,  however,  the  words  are  descriptive,  the  combination  is  invalid 
as  a  trade-mark  for  example,  "Birdsboro  Trap  Rock"  ^^  or  "Los 
Angeles  Van,  Truck  &  Storage  Co."  ^^ 

A  further  exception  to  the  general  rule  may  be  noted.  A  place 
name  may  be  a  good  trade-mark  where  the  place  is  exclusively 
occupied  by  the  trader,  for  example:  "Bethesda"  (spring) ;^^ 
"Blue  Lick  Water"  (springs  controlled  by  one  concern) ;^^ 
" Rischon-le-Zion "  (name  of  one  farm).^^ 

^^  McAndrew  v.  Bassett,  10  Jur.  N.  ^'^  A.  Bauer  &  Co.  v.  Siegert,   120 

S.  492.  Fed.  81. 

2<  Cahn  V.  Hoffman  House,  28  N.  Y.  ^9  \y^  ji   ly^n  Shoe  Co.  v.  Auhurn- 

Supp.  388.  Lyim  Shoe  Co.,  100  Maine,  461. 

"  Carmel  Wine  Co.  v.  Palestine  H.  ^°  John    T.    Dyer    Quarry    Co.    v. 

W.  Co.,  161  Fed.  654;  Jewish  Coloniza-  Schuylkill  Stone  Co.,  185  Fed.  557. 

tion  Assn.  v.  Solomon  &  Germansky,  ^^  Dunston  v.  Los  Angeles  V.  &  S. 

154  Fed.  157.  Co.,  165  Cal.  89  (these  words  had  been 

**  Dwinell-W right  Co.  v.  Co-operative  registered  as  a  trade-mark,  but  were 

Supply  Co.,   148  Fed.  242   (on  final  condemned  as  both  geographical  and 

hearing,  155  Fed.  909).  descriptive). 

^^  Dennison  v.    Thomas,    94    Fed.  ^^  Dimbar  v.  Glenn,  ^^2  Wis.  118. 

651-3.  "  Parkland  Hills  Blue  Lick  Water 

"  Baglin  v.  Cusenier  Co.,  156  Fed.  Co.  v.  Hawkins,  95  Ky.  502. 

1016;  see  same  case,  221  U.  S.  580.  ^*  Jewish  Colonization  Assn.  v.  Solo- 
mon &  Germansky,  154  Fed.  157. 


Personal  or  Family  Names  403 

The  true  rule  would  seem  to  be,  that  where  a  geographical 
name  is  used  in  trade,  not  in  its  geographical  sense,  but  as  a  name 
for  the  goods  of  one  particular  person,  that  person  may  prevent 
others  using  the  word,  not  in  its  geographical  sense,  but  as  the  name 
of  competing  goods.  It  is  of  no  value  in  applying  this  rule  to 
discuss  whether  it  is  used  by  the  defendant  as  a  trade-mark  or  as 
a  trade-name.  The  important  question  is  whether  it  is  used  in  its 
public  or  geographical  meaning  jar  in  its  trade  meaning.^^  If  it  is 
used  by  the  defendant  in  the  latter  sense  he  may  be  enjoined 
under  the  rules  of  unfair  competition. 

§  206.  Personal  or  Family  Names.  —  The  courts  of  the  United 
States  have  often  held  that  a  personal  or  family  name  cannot  be  a 
trade-mark. '^^  Such  names  sometimes,  however,  acquire  prac- 
tically all  the  characteristics  of  a  true  trade-mark. ^^ 

A  family  name  is  a  good  trade-mark,  except  as  against  others  of 
the  same  name,^^  just  as  a  geographical  name  may  be  a  trade-mark 
when  used  in  a  non-descriptive  way  as  ''Vienna  Bread"  as  a  name 
for  bread  made  in  New  York  by  some  particular  concern,  or  Paris 
garters  for  garters  made  by  an  American  concern. 

Under  the  rule  as  formerly  understood  and  applied  a  family 
name  might  not  be  used  as  a  technical  trade-mark.  It  is  not  a 
fanciful  name.  It  is  in  the  public  domain  so  far  as  all  persons  are 
concerned  that  rightfully  bear  the  name  in  question.    But  a  rule 

3*  Oneida  Community,  Ltd.,  v.  Oneida  forbidden  to  use  the  name  "  Williams  " 

Game  Trap  Co.,  Inc.,  168  App.  Div.  in  its   corporate   name   or  otherwise 

(N.  Y.)  769.  unless  conjoined  with  some  word  or 

'^  Thaddeus  Davids  Co.  v.  Davids,  words  other  than  a  Christian  name, 

233  U.  S.  461,  464,  and  cases  cited;  or  unless  accompanied  by  explanatory 

Borden's  Ice  Cream  Co.  v.  Borden's  words  differentiating  it  from  the  old 

Condensed  Milk  Co.,  201  Fed.  510.  concern.     (See  form  of  inj.,  p.  385, 

"  Liebig's  Extract  of  Meat  Co.   v.  affd.  C.  C.  A.)     Drake  Medicine  Co.  v. 

Liebig's   Extract    Co.,    180   Fed.    688  Gkssner,  68  Ohio,  337  ("Dr.  Drake's 

(C.    C.   A.);    Williams   Soap   Co.    v.  German  Croup  Remedy");  Burke  v. 

/.  B.  Williams  Soap  Co.,  193  Fed.  384  Cassin,  45  Cal.  467,  480  (in  which  the 

(C.  C.  A.),     Complainant  (appellee)  court  say:  "The  name  of  the  manu- 

was  the  well-known  soap  concern  of  facturer  or  seller  of  goods  may,   of 

Connecticut.     Appellant,  whose  cor-  course,  be  used  as  a  trade-mark"), 
porate  name  containing  from  the  first,  ^^  In    National    Distilling    Co.    v. 

the  word   "Wilhams,"   derived  from  Century  Liquor  &  Cigar  Co.,  183  Fed. 

founders  of  the  concern  of  that  name  206,  "Livingstone"  (for  whisky)  was 

had  been  changed  to  resemble  more  held  to  be  a  good  trade-mark  except  as 

nearly  the  name  of  complainant,  was  against  persons  of  that  name. 


404      What  May  be  Appropriated  as  a  Trade-Mark 

that  stops  here  would  fall  far  short  of  meeting  the  demands  of  the 
business  world.  Such  a  rule  would  leave  totally  unprotected  all 
of  the  good-will  that  is  represented  by  the  vast  number  of  family 
names  that  have  acquired  through  long  use  in  trade  a  distinct 
commercial  meaning  quite  apart  from  their  use  as  designating 
persons  who  bear  the  name  as  a  family  name.  To  meet  these 
conditions,  the  law  has  developed  the  doctrine  of  unfair  competi- 
tion known  as  the  secondary  meaning  rule  which  affords  protection 
to  such  names  used  in  a  trade  sense  distinct  from  their  ordinary 
family  meaning.  A  discussion  of  cases  of  this  sort  will  be  found  in 
chapters  on  "Family  Names  "  and  "Secondary  Meaning." 

Strictly  speaking  this  secondary  use  of  these  names  is  not  a 
pure  trade-mark  use.  Practically  speaking,  however,  such  names 
perform  the  functions  of  a  trade-mark. 

The  Trade-Mark  Act  of  1905  as  originally  passed,  did  not 
permit  registration  of  a  mark  which  consisted  merely  in  the.  name 
of  an  individual,  unless  written  in  a  distinctive  way  or  accom- 
panied by  a  portrait  of  the  individual,  or  unless  it  had  been  used 
as  prescribed  in  the  "ten  year"  clause.  Subsequently  an  amend- 
ment to  section  5  was  passed  which  permits  the  applicant  to  regis- 
ter his  own  name  or  a  part  thereof.''^ 

§  207.  Names  of  Patented  Articles.  —  The  name  of  a  patented 
article  which,  during  the  life  of  the  patent,  has  become  familiar 
to  the  public  as  the  designation  of  the  article,  is  open  to  public 
use  on  the  expiration  of  the  patent  and  may  not  be  used  as  a  trade- 
mark. Although  the  word  may  originally  have  been  fanciful  and 
one  legally  appropriable  as  a  trade-mark,  its  use  as  the  one  apt 
name  of  the  patented  article  has  placed  it  in  the  public  domain 
and  it  can  no  longer  be  monopolized  even  by  the  original  maker.'*'' 
The  rule  governing  the  use  of  the  names  of  patented  articles  as 

^3  "There  is  between  a  name  of  an  thousands,  to  all  of  whom  it  is  equally 
individual  or  firm  used  as  a  trade-  appropriate."  Sebastian  on  Trade- 
mark and  a  fancy  name  or  arbitrary  Marks  (5th  ed.),  39.  Under  the  Eng- 
symbol  used  for  the  same  purpose,  a  lisli  Act,  a  personal  name  may  in  some 
broad  distinction,  which  was  early  cases,  though  not  as  a  matter  of  course, 
perceived,  and  which  caused  some  be  registered  as  a  trade-mark.  See  Teo- 
difficulty  in  the  universal  acceptance  jani  &  Co.,  Ltd.,  v.  Teojand,  30  R.  P. 
of  a  name  as  an  efficacious  trade-mark.  C.  446.  See  chapter  on  "  Registered 
The  difference  is  that  a  name  is  in  its  Trade-marks,"  Trade-mark  act,  Sec.  5, 
very  nature  generic,  and  is  properly  T.  Davids  v.  Davids,  233  U.  S.  461. 
apphed  to  designate,  not  one  individ-  ^"  Centaur  Co.  v.  Heinsfurter,  84  Fed. 
ual  in  the  world,  but,  it  may  be,  many  955. 


Foreign  Words  405 

trade-marks  is  merely  a  particular  application  of  the  general  rule 
as  to  descriptive  or  generic  words.  The  exclusive  right  of  the 
patentee  to  use  what  has  become  the  generic  name  of  a  patented 
article  ceases  on  expiration  of  patent  or  copyright  because  the 
word  during  the  term  of  the  monopoly  has  come  to  be  a  word  of 
apt  description  and  hence  necessary  to  the  uses  of  the  public  in 
referring  to  the  article  it  describes. ^^ 

The  following  are  examples  of  names  of  patented  or  copyrighted 
articles  which  have  been  held  not  available  for  trade-marks: 

"Vertical  Top"  (cigar  mold).*^ 

''Ludlow  Valves."  '' 

''Blount  Door  Checks."  ^^ 
"Triplex  Blocks."  45 

"De  Long  Hook  and  Eye."  ^^ 

"Singer  Sewing  Machines."  "^^ 

But  if  a  trade-mark  or  trade  name  was  used  before  the  patent 
was  obtained,  the  mark  or  name  does  not  become  public  property 
upon  the  expiration  of  the  patent,  especially  where  the  patent  did 
not  contribute  greatly  to  the  value  of  the  trade-mark.''^ 

§  208.  Foreign  Words.  —  A  word  adopted  from  a  foreign  lan- 
guage, but  descriptive  in  that  language,  may  not  be  appropriated 
as  a  trade-mark.  In  a  California  case,"^^  the  authorities  are  said 
to  be  "virtually  without  conflict"  as  to  this. 

The  following  are  examples  of  foreign  words  which  have  been 
held  unavailable  as  trade-marks  because  descriptive  in  a  foreign 
language : 

"Matzoon"  (Armenian  name  of  milk  product). ^"^ 

"  G.  &  C.  Merriam  v.  Saalfield,  198  «  Yale  &  Towne  Mfg.  Co.  v.  Restein, 

Fed.  369,  374   (C.  C.  A.).     Warren  196  Fed.  176;  Id.  v.  Ford,  203  Fed. 

Featherbone  Co.  v.  American  Feather-  707  (C.  C.  A.). 

bone  Co.,  141  Fed.  513;  Batcheller  v.  *^  DeLong  Hook  &  Eye  Co.  v.  Amer- 

Thomson,  93  Fed.  660,  664;  same  prin-  ican  Pin  Co.,  200  Fed.  66. 

ciple,  Avenarius  v.  Kornely,  139  Wis.  ^^  Singer  Mfg.  Co.  v.  June  Mfg.  Co., 

247,  268  (1909).  163  U.  S.  169. 

« Sternberg  Mfg.  Co.  v.  Miller  &c.  *^  Batcheller   v.    Thomson,   93   Fed. 

Co.,  161  Fed.  318.  660,  664;  Avenarius  v.  Kornely,  1-39 

*' Ludlow  Valve  Mfg.  Co.  v.  Pitts-  Wis.  247,  268  (1909). 

burgh  Mfg.  Co.,imFed.2Q  (CCA.).  '^Italian   Swiss   Colony   v.   Italian 

"  Yale  &  Towne  Mfg.  Co.  v.  Worces-  Vineyard  Co.,  158  Cal.  252,  257-1910. 

ter  Mfg.  Co.,  195  Fed.  528  (C.  C.  A.).  ^o  Dadirrian  v.   Yacubian,  98  Fed. 

As  to  method  of  differentiating  pre-  872  (C.  C.  A.), 
scribed,  see  same  case,  205  Fed.  952. 


40G      What  May  be  Appropriated  as  a  Trade-Mark 

"Svenska  Snusmagasinet "  (snuff)." 
"Parcheesi"  (for  game  so  named  in  India). ^^ 
"Tipo"  (wine).^3 

"Brassiere"  (corset  cover  or  jacket).^* 

"Schnapps"  (for  gin).^^ 

"Bokol"  (for  beer  imported  from  Norway). ^^ 

"Conserva  di  Tomate."  " 

"  Abricotine"  (for  a  cordial),  although  held  to  be  a  good  trade- 
mark,^^ is  not  an  exception  to  the  rule,  as  it  is  treated  as  a  coined 
word. 

§  209.  Letters  of  the  Alphabet.  —  Letters  of  the  alphabet  may 
be  good  technical  trade-marks  if  used  to  denote  origin  and  so 
understood,  and  if  so  combined  as  to  form  a  distinctive  mark. 
For  example,  "N.  S."  (for  cigars), ^»  "O.  F.  C."  (for  whiskey),^" 
"G.  E."  (for  electric  lamps)  have  been  held  vaHd  trade-marks.®^ 
Letters  used  as  trade-marks  are  often  the  initials  of  the  trader.®^ 

Frequently  letters  are  used  in  connection  with  a  device  or  sym- 
bol, and  thus  form  only  part  of  the  trade-mark.®^ 

As  in  the  case  of  numerals,  if  a  series  of  letters,  or  combinations 
of  letters,  are  used  to  denote  the  different  grades,  sizes,  etc.,  of  a 
product,  and  not  to  denote  origin,  they  are  not  ordinarily  recog- 
nized as  trade-marks.®^ 

"  Bolander  v.  Peterson,  136  111.  215.  ^^  General   Electric    Co.    v.    Re-new 

"  Selchow  V.  Chaffee  &  S.  Mfg.  Co.,  Lamp  Co.,  128  Fed.  154. 

132  Fed.  996.  82  «a.  V.  H."  in  Van  Hoboken  v. 

^'  Italian  Swiss   Colony  v.   Italian  Mohns  &  Kaltenbach,   112  Fed.  528; 

Vineyard  Co.,  158  Cal.  252.  "G.  J.  G."  in  G.  &  J.  Tire  Co.  v.  G.  J. 

"  Chas.  R.  DeBevoise  Co.  v.  H.  &  W.  G.  Motor  Car  Co.,  39  App.  D.  C.  508 

Company,  69  N.  J.  Eq.  114.  (1913). 

"  Wolfe  V.  Goidard,  18  How.  Pr.  64.  "  Examples:  the  "A.  V.  H."  trade- 

'^B  DarJs  V.  S/n6o/i,  59  L.  T.  N.  S.  mark    above    referred    to;    "P.    G." 

854.  (initials  of  trader)  on  shield,  with  word 

^^  Roncoroni  v.  Gross,  92  App.  Div.  "Abricotine"  and  autograph  signature. 

(N.  Y.)  221.  Rossman  v.  Gamier,  211  Fed.  401 ;  "A. 

^^  Gamier  v.  Rossman,  195  Fed.  175;  G."  forming  but  a  small  part  of  a  label 

on  the  appeal  of  this  case,  Rossman  v.  and  trade-mark,  Godillot  v.  Harris,  81 

Gamier,  211   Fed.  401,  it  was  held  N.  Y.  263.     In  American  Tin  Plate  Co. 

(Hook,  C.  J.,  dissenting)  that  judicial  v.  Licking  Roller  Mill  Co.,  158  Fed.  690 

notice  could  be  taken  of  the  meaning  (C.  C.,  Ky.  1902)  the  letters  "M.  F." 

of  a  foreign  word.  were  presented  in  monogram,  enclosed 

"  Frank  v.  Sleeper,  150  Mass.  583.  in  a  circle,  but  the  letters  were  con- 

8"  Geo.  T.  Stagg  Co.  v.  Taylor,   95  sidered  the  essential  feature. 

Ky.  651.  ^*  Lawrence  Mfg.  Co.  v.   Tennessee 


Numerals  407 

Letters,  when  written  in  a  peculiar  or  distinctive  way,  are 
protected  as  trade-marks.  This  is  a  frequent  method  of  branding 
goods.  Various  forms  of  script  copies  of  signatures,  flourishes  used 
in  making  letters,  and  the  like  may  be  protected  as  trade-marks.^^ 

Monograms  are  considered  as  fanciful  devices,  which  may 
become  trade-marks.^^ 

§210.  Numerals.  —  Whether  numerals  may  be  employed  as 
trade-marks  is  a  question  of  sortie  doubt.^'  In  considering  the 
cases  on  this  subject  it  should  be  borne  in  mind  that  most  of  them 
are  unfair  competition  cases  rather  than  strict  trade-mark  cases. 
In  a  leading  case  on  this  general  question  Lurton,  C.  J.,  reviews 
the  cases  and  summarizes  the  rules  to  be  deduced  from  them  thus : 
"Combined  with  a  name,  a  word  or  some  other  sign  or  s3Tiibol 
a  numeral  may  well  become  a  vital  part  of  a  valid  trade-mark."  ^^ 
The  case  further  held  that  the  use  of  a  numeral  could  not  be  pro- 
tected unless  it  was  shown  that  the  primary  object  and  purpose  of 
its  use  was  to  indicate,  not  quality,  grade,  or  style  of  the  goods, 
but  the  identity  of  the  owner  or  producer  and  to  distinguish  it  from 
similar  articles  made  by  others.  In  Goldsmith  Silver  Co.  v.  Sav- 
age,^^  the  Circuit  Court  of  appeals,  First  Circuit,  by  Bingham,  J., 
says:  —  "Whether  naked  numerals  may  constitute  a  vaHd  trade- 
mark has  never  been  determined.  The  cases,  however,  are  not 
without  expressions  of  opinion  upon  the  subject,  some  viewing  the 
matter  from  one  standpoint  and  some  from  another,  and  text- 
writers  have  entertained  equally  divergent  views." 

Putnam,  J.,  in  a  dissenting  opinion  discusses  fully  the  question 
of  whether  numerals  may  be  valid  trade-marks.    He  says : — 

"There  has  never  been  any  authoritative  decision  sustaining 
the  claim  of  the  respondent  that  a  number  like  108  may  not  be 
properly  held  to  be  a  trade-mark.  In  this  particular  case  it  seems 
to  have  been  taken  from  the  street  number  of  the  building  where 
the  complainant's  factory  or  place  of  trade  was.    In  McLean  v. 

Mfg.  Co.,  138  U.  S.  537  ("L  L"  used  Balm  Co.,  77  Ga.  216;  Cook  v.  Stark- 

to  mark  a  certain  grade  or  quality) ;  weather,  13  Ab.  Pr.  N.  S.  (N.  Y.)  392. 

Stevens  Linen  Works  v.  Wm.  &  John  ^*  Godillol  v.  American  Co.,  71  Fed. 

Don  &  Co.,  127  Fed.  950  (letters  de-  873;  Smith  v.  Fair,  14  Ont.  729. 

noting  grade  only).  ^''Goldsmith   Silver   Co.  v.   Savage, 

"  Van  Hoboken  v.  Mohns,  112  Fed.  229  Fed.  623. 

528;  Moet  v.  Pickering,  6  Ch.  Div.  ^^  Dennison  Mfg.  Co.  v.  Scharf  Tag, 

770,  47  L.  J.  Ch.  527;  Foster  v.  Blood  Label  &  Box  Co.,  135  Fed.  625. 

"9  229  Fed.  623  1916. 


408      What  May  be  Appropriated  as  a  Trade-Mark 

Fleming,  96  U.  S.  245;  24  L.  Ed.  828,  there  is  a  full  and  complete 
discussion  by  Mr.  Justice  Clifford  of  the  law  of  trade-marks; 
and  he  makes  it  sweeping  enough  to  cover  in  a  mere  number. 
As  we  have  said,  there  has  been  no  authoritative  decision  throw- 
ing out  numbers  as  trade-marks,  though  there  has  been  con- 
siderable discussion  on  the  topic.  As  applied  to  the  present  case, 
the  numerals  answer  all  the  demands  for  a  proper  trade-mark, 
indicating  nothing  except  such  elements  as  are  proper  to  estab- 
lish trade-mark  rights;  and,  in  the  lack  of  any  authoritative 
hostile  decision,  we  might  accept  the  position  of  the  complainant 
in  view  of  the  general  observations  of  Mr.  Justice  Clifford  (96 
U.  S.  at  pages  250,  254;  24  L.  Ed.  828),  especially  about '  symbol, 
figure,  letter,  form,  or  device.'  These  observations  are  sufficient 
to  show  the  position  of  the  federal  courts." 

Judge  Putnam  then  discusses  the  case  of  Gillott  v.  Esterhrook, 
48  N.  Y.  374,  and  quotes  from  the  opinion  of  the  Supreme  Court 
of  Rhode  Island  in  the  American  Solid  Leather  Button  Co.  v.  An- 
thony,^^"  as  follows: 

"A  trade-mark  when  appUed  to  manufactured  articles  may  well 
consist  of  the  name  and  address  of  the  manufacturer,  with  the 
addition  of  some  peculiar  device  or  emblem,  some  curious  forms 
or  figures,  so  disposed  as  to  attract  attention,  impress  the  memory, 
and  advertise  more  effectually  the  origin  of  the  article  to  which 
it  is  attached.  This  affords  a  wide  field  for  ingenuity  in  producing 
designs,  which  the  increasing  variety  of  modern  trade-marks 
shows  is  not  wholly  neglected,  and  it  may  be  that  even  numerals 
or  letters  of  the  alphabet  can  be  combined  and  printed  in  such 
unusual  and  peculiar  forms,  that  the  result  would  be  quite  suf- 
ficient for  use  as  a  trade-mark."  "^^ 

"It  may  be  difficult  to  give  to  bare  numbers  the  effect  of  in- 
dicating origin  or  ownership;  and  it  may  be  still  more  difficult 
to  show  that  they  were  originally  designed  for  that  purpose;  but 
if  it  be  once  shown  that  that  was  the  original  design,  and  that  they 
have  had  that  effect,  it  may  not  be  easy  to  assign  a  reason  why  they 
should  not  receive  the  same  protection,  as  trade-marks,  as  any 
other  symbol  or  device."  '^^ 

^^"  15  R.  I.  338.  Co.,  35  Conn.  402.    See  also  National 

'"  Lawrence    Mfg.     Co.     v.     Lowell  Carbon  Co.  v.  Bright  Star  Battery  Co., 

Hosiery  Mills,  129  Mass.  325-1880.  4  Trade-Mark  Rep.  346. 
"'  Boardman  v.  Meriden  Britannia 


CHAPTER  XV 
Acquisition  of  Technical  Trade-Marks 

Section  211.  Introductory. 

212.  Who  may  acquire  a  trade-mark. 

213.  Rights  of  foreigners. 

214.  How  a  trade-mark  may  be  acquired. 

215.  Adoption  of  a  trade-mark. 

216.  Priority  of  use  against  priority  of  invention. 

217.  Priority  and  exclusiveness  of  use. 

218.  Length,  extent  and  manner  of  use. 

219.  Change  in  goods  to  which  trade-mark  is  applied. 

220.  Territorial  extent  of  technical  trade-mark  rights. 

221.  Trade-mark  protection  limited  to  goods  of  the  same  class. 

§  211.  Introductory.  —  In  this  chapter  only  common-law,  or 
technical  trade-marks  are  dealt  with.  Cases  under  the  United 
States  Trade-Mark  Act  will  be  found  in  the  chapter  on ''  Registered 
Trade-Marks  and  the  Federal  Trade-Mark  Act."  Questions  re- 
lating to  the  transfer  of  trade-mark  rights,  to  the  rights  of  a  with- 
drawing or  surviving  partner,  and  similar  matters,  are  dealt  with 
in  the  chapter  on  ''Good-will." 

§  212.  Who  may  Acquire  a  Trade-Mark. — Not  only  a  manufac- 
turer of  goods,  but  a  merchant,  distributer,  jobber,  bottler,  or  other 
person  who  selects  goods  and  markets  them,  or  places  them  before 
the  public  may  adopt  and  use  his  own  trade-mark.^  In  Menendez 
V.  Holt,^  the  trade-mark  (''La  Favorita,"  for  flour)  was  not  that 
of  the  manufacturer,  but  that  of  one  who  selected  and  marketed 
the  flour.  In  Nelson  v.  Winchell  &  Co.,^  it  is  said:  "The  use  of  a 
trade-mark  does  not  necessarily  and  as  a  matter  of  law  import 
that  the  articles  upon  which  it  is  used  are  manufactured  by  the 
user.  It  may  be  enough  that  they  are  manufactured  for  him  and 
that  he  controls  their  production,  or  even  that  they  pass  through 
his  hands  in  the  course  of  trade,  and  that  he  gives  to  them  the 
benefit  of  his  reputation,  or  of  his  name  and  business  style."  The 
British  Trade-Mark  Act,  1905  (§  3),  provides  that  one  may  be 

1  Hughes  v.  Alfred  H.  Smith  Co.,  205  ^  12s  U.  S.  514. 

Fed.  302,  aff'd,  209  Fed.  37  (C.  C.  A.  ^  203  Mass.  75,  82. 

1913). 

409 


410  Acquisition  of  Technical  Trade-Marks 

the  proprietor  of  a  trade-mark  * '  by  virtue  of  manufacture,  selec- 
tion, certification,  dealing  with,  or  offering  for  sale." 

The  question  sometimes  arises  whether  a  particular  trade-mark 
belongs  to  the  manufacturer,  the  jobber  or  the  seller.  If  the 
latter  has  ordered  goods  made  for  him  bearing  a  particular  mark 
or  brand  selected  by  him,  it  will  ordinarily  be  deemed  his  mark.^ 
This  is  what  is  known  in  trade  as  a  "private  brand." 

§  213.  Rights  of  Foreigners.  —  In  general,  even  independent  of 
treaty,  foreigners  have  the  same  right  as  citizens,  to  be  protected 
in  the  use  of  trade-marks  actually  used  by  them  on  goods  sold 
in  this  country.^  Treaty  provisions  are  sometimes  referred  to,  ® 
but  except  as  to  registration  under  the  Federal  Trade-Mark  Act, 
the  effect  of  said  provisions  seems  hardly  more  than  confirmatory 
of  the  common-law  rights  of  aliens.  It  was  not  intended  by  treaty 
to  put  aliens  on  a  more  favorable  footing  than  citizens.^  Priority 
of  use  abroad  will  not  avail  them  as  against  one  who  anticipates 
them  in  using  the  trade-mark  in  American  trade.^  Under  the 
Federal  Trade-Mark  Law  (Act  of  1905)  there  are  special  pro- 
visions regarding  the  registration  of  trade-marks  by  foreigners 
(see  chapter  on  "  Registered  Trade-Marks  and  the  Federal  Trade- 
Mark  Act"). 

§  214.  How  a  Trade-Mark  May  be  Acquired.  —  The  trader 
must  do  three  things  in  order  to  acquire  a  good  title  to  a  technical 
trade-mark.  First,  he  must  adopt  a  trade-mark  open  to  appro- 
priation; second,  he  must  apply  it  or  attach  it  physically  to  a 

••  Michigan  Condensed  Milk  Co.  v.  ^  French  Republic  v.  Saratoga  Vichy 

Kenneweg  Co.,  30  App.   D.   C.  491.  Co.,  191  U.  S.  427,  439. 

See  also  Shelly  v.  Sperry,  121  Mo.  App.  »  Walter  Baker  &  Co.  v.  Delapenha, 

429   (seller's  mark   and   name   being  160   Fed.   746.     See  also   Baglin   v. 

placed  by  manufacturer  on  cartons,  Cusenier  Co.,  221  U.  S.  580,  to  the 

and  seller  being  there  named  as  manu-  effect  that  our  law  and  the  facts  of 

facturer.  the  trade  in  this  country  prevail  in 

*  Taylor  v.  Carpenter,  3  Story,  458.  case  of  conflict  over  foreign  law  and 

In  De  Nobili  v.  Scanda,  198  Fed.  341,  the   facts   of   foreign    trade.      So    in 

there  is  probably  no  intention  to  limit  Avenarius  v.  Konnely,  139  Wis.  247, 

the  right  of  aliens'  common  law  relief,  270,  it  is  said:  "Our  courts  are  not 

but  only  where  the  U.  S.  Trade-Mark  bound  by  any  foreign  rule,  judicial  or 

Act  is  invoked,  to  require  the  fulfill-  otherwise,  as  to  the  precise  essentials 

ment    of    its    reciprocity    condition  of   a   trade-mark.     The   question   is 

before    extending    rehef    under    that  whether  plaintiff's  claim  is  in  harmony 

Act.  with  the  law,  wTitten  and  unwritten, 

8  Kerry  v.  Toupin,  60  Fed.  272.  of  this  country." 


Adoption  of  a  Trade-Mark  411 

vendible  commodity,  and  third,  he  must  actually  put  the  commod- 
ity so  marked  on  the  market.^  The  offering  of  goods  for  sale 
to  the  public  is  necessary,  if  not  actual  sale.  (See  note  26, 
infra.) 

§  215.  Adoption  of  a  Trade-Mark.  —  The  act  of  adoption  is  a 
most  important  one  in  connection  with  the  determination  of 
trade-mark  rights.  A  trade-mark  may  have  been  adopted  by  a 
defendant  almost  immediately  after  it  was  first  adopted  by  a 
plaintiff,  yet  if  it  is  conclusively  shown  that  the  plaintiff  was  the 
first  to  adopt  the  trade-mark,  this  fact  is  important  in  determining 
the  respective  rights  of  the  parties.^" 

In  considering  the  question  of  rights  acquired  by  adoption,  a 
sharp  distinction  must  be  observed  between  cases  involving 
fanciful,  non-descriptive  words  which  may  become  strict  or  pure 
trade-marks  and  cases  involving  the  use  of  names  or  designs 
which  are  in  the  public  domain.  The  adoption  of  a  fanciful  non- 
descriptive  word,  followed  by  even  slight  use,  creates  in  the 
person  so  adopting  and  using  it  a  distinct  and  specific  trade- 
mark right,  provided  he  be  the  first  person  to  adopt  and  use  the 
mark  in  question. 

This  right,  once  acquired,  must  be  supported  by  a  use  suffi- 
ciently constant  to  indicate  an  intention  on  the  part  of  the  owner 
of  the  mark  to  continue  to  use  it  and  not  to  abandon  it.  This 
does  not  mean  in  any  sense  that  the  title  to  a  common-law  trade- 
mark depends  upon  any  comparison  of  the  extent  of  the  use  of  the 
first  user  with  that  of  a  later  user.  The  second  user  may  plunge 
into  business  on  a  large  scale  and  use  the  mark  on  a  large  volume 
of  goods,  while  the  first  user  may  continue  his  business  on  a  modest 
scale  and  use  the  trade-mark  to  a  very  limited  extent.  If,  however 
his  use  be  reasonably  constant  and  is  bona  fide,  the  extent  of  that 
use  as  compared  with  that  of  the  second  user  has  nothing  to  do 
with  his  title. 

In  fact  there  is  grave  doubt  if,  in  a  case  involving  the  title  to  a 
non-descriptive  or  fanciful  name  or  mark,  evidence  of  the  extent 
in  volume  of  the  use  of  a  second  user  is  admissible  at  all.  Evi- 
dence of  this  character  is  of  the  utmost  importance  in  a  case  in- 
volving rights  based  on  secondary  meaning.     It  has  nothing  to 

» Schneider  v.  Williams,  44  N.  J.  ^  Waldes  v.  International  Manu- 
Eq.  391  (1888).  facturcrs  Agency,  237  Fed.  502,  U.  S. 

Dist.  Ct.,  So.  Dist.  N.  Y.,  1916. 


412  Acquisition  of  Technical  Trade-Marks 

do  with  the  right  of  the  first  adopter  and  user  of  a  common-law 
trade-mark. 

Rights  acquired  by  adoption  and  use  cannot  be  lost  or  im- 
paired except  by  acts  on  the  part  of  the  owner  of  the  mark  amount- 
ing to  abandonment. 

In  considering  the  rights  of  the  owner  of  a  common-law  trade- 
mark, the  fact  is  often  lost  sight  of  that  such  a  mark  is  based  on 
adoption  primarily,  while  rights  in  a  trade  name,  or  a  name  in  the 
pubhc  domain,  are  based  primarily  on  the  extent  of  the  use  of 
the  mark  and  the  consequent  knowledge  obtained  by  the  public 
of  the  mark  through  such  use.^'' 

§  216.  Priority  of  Use  against  Priority  of  Invention.  —  It  is 
priority  of  use  and  not  priority  of  invention  which  affords  the 
right  to  a  trade-mark.  He  who  first  conceives  a  trade-mark  but 
does  not  put  his  thought  into  action  in  the  use  of  his  invention  for 
trade-mark  purposes,  possesses  no  right  as  against  the  second 
discoverer  of  the  idea,  provided  the  latter  puts  his  idea  into  imme- 
diate use  as  a  trade-mark  upon  his  goods.  The  Supreme  Court  has 
said:  "The  exclusive  right  to  the  use  of  the  mark  or  device  claimed 
as  a  trade-mark  is  founded  upon  priority  of  appropriation ;  that  is 
to  say,  the  claimant  of  the  trade-mark  must  be  the  first  to  use  or 
employ  the  same  on  like  articles  of  production."  ^°  The  inventing 
or  selecting  of  the  mark,  and  the  decision  to  adopt  it  is,  therefore, 
not  sufficient  to  establish  trade-mark  rights.  ^^  It  is  not  enough 
to  declare  publicly,  as  by  advertising  or  through  circulars  or 
trade-lists,  that  the  trade-mark  has  been  adopted. ^^  What  is 
claimed  as  a  trade-mark  must  have  been  used  under  such  condi- 
tions as  to  make  it  clear  that  it  is  intended  as  a  trade-mark. ^^    A 

^^  Baker    v.    Delapenha,    160    Fed.  ^^  Candee,  Swan  &  Co.  v.  Deere  & 

746-9;   Columbia  Milling  Co.  v.  Al-  Co.,  54  111.  439. 

corn,    150  U.  S.  460-3;   Kathreiner's  i' See  Capeivell  Horse  Nail  Co.   v. 

Malzkajfee,  etc.,  v.   Pastor,  82    Fed.  Putnam  Nail  Co.,  140  Fed.  670.     In 

321;  Tetlow  v.  Tappan,  85  Fed.  774;  this  case,  a  check  mark  impressed  on 

Welsbach  Co.  v.  Adam,  107  Fed.  463;  a  horse  nail  was  not  considered  under 

McAndrew  v.  Bassett,  4  DeGex,  J.  &  S.  the  evidence  to  be  intended  as  a  trade- 

380-4.  mark  and  recognized  as  such  by  the 

^°  Columbia  Mill  Co.  V.  Alcorn,  150  public.     The   evidence   offered   in   a 

U.  S.  460,  463;  14  Sup.  Ct.  151,  152.  later  case,  however,  was  considered  to 

"  Welsbach  Light  Co.  v.  Adam,  107  show  that  this  same  mark,  although 

Fed.  463,  and  George  v.  Sjnith,  52  Fed.  intended  also  to  serve  other  purposes, 

830;  American  Washboard  Co.  v.  Sagi-  had  been  adopted  with  the  distinct 

juiw  Mfg.  Co.,  103  Fed.  281-287.  purpose  of  denoting  origin  and  serving 


Priority  and  Exclusiveness  of  Use  413 

trade-mark  is  sometimes  acquired  involuntarily.  A  trade-mark 
says  the  Supreme  Court  ''is  often  the  result  of  accident  rather 
than  design."  ^^^  This  is  usually  brought  about  by  reason  of  the 
use  by  the  public  of  some  name  of  its  own  choosing  as  the  name  for 
some  dealer's  goods.  When  this  occurs  the  nick-name  so  given 
to  a  product,  if  affixed  to  it,  is  just  as  valid  a  trade-mark  for  it  as 
the  most  carefully  chosen  device  or  name. 

§  217.  Priority  and  Exclusiveness  of  Use.  —  It  is  an  essential 
condition  of  acquiring  a  particular  trade-mark  that  it  is  not  al- 
ready in  use  by  another,  at  least  in  the  market  where  it  is  to  be 
used  on  goods  of  the  same  descriptive  properties.  As  we  have 
already  seen,  the  question  of  priority  is  not  determined  by  the 
time  of  invention  or  announcement,  unless  that  coincides  with  the 
date  of  its  first  use  as  a  trade-mark.  The  right  acquired  by  adop- 
tion is  incomplete  until  the  use  of  the  mark  on  the  goods  begins. 
The  claimant  of  a  trade-mark  is  not  prejudiced  by  an  earlier  use 
for  another  purpose.  The  word  ''Keystone,"  claimed  as  a  trade- 
mark for  a  cigar,  had  been  previously  used  by  another  dealer  as 
part  of  his  label,  but  not  under  such  circumstances  as  to  indicate 
its  use  as  a  trade-mark. ^^  A  slight,  temporary  or  tentative  use 
may  not  prejudice  the  right  of  a  person  subsequently  adopting 
a  trade-mark, ^^  but  if  there  has  been  an  earlier,  definite  applica- 
tion of  the  trade-mark  in  actual  trade,  then  the  small  extent  of 
the  trade  does  not  justify  a  superior  claim  by  a  subsequent  user.^^ 

A  trade-mark  need  not  necessarily  be  used  first  by  the  one 
claiming  it.  A  trader  may  adopt  an  old  mark  that  has  been 
abandoned.  In  Cohen  v.  Nagle,  it  is  said,  "There  is  no  doubt  that 
an  abandonment  paves  the  way  for  future  possession  and  prop- 
erty in  another  person."    Other  cases  to  this  effect  are  referred 

as  a  trade-mark,  and  was  so  understood  garded  in  favor  of  one  who  had  after- 

by  the  pubUc.     167  Fed.  575.      See  wards  used  the  trade-mark  for  years 

Greene  v.  Manufacturers'  Co.,  158  Fed.  and  had  built  up  a  large  trade  in  it. 

640.  See  also  Holt  v.  Menendez,  23  Fed. 

13"  Trademark  Cases,  100  U.  S.  82;  869,  in  which  there  was  some  evidence 

25  L.  Ed.  550.  of  a  prior  use  of  the  mark  or  name  at 

^*  Cohen  v.  Nagle,  190  Mass.  4.  St.   Louis.     This   was   deemed   inef- 

^^  In  McGraw  Tire  &  Rubber  Co.  \.  fectual  as   "casual   and   fortuitous," 

Griffith,   198  Fed.  566,  a  very  slight  continuing  for  a  short  period  only,  and 

and  temporary  use  of  a  trade-mark  "soon  abandoned  and  forgotten." 

("Imperial"  Tires),  having  no  prac-  ^^  Kahn  v.  W.  A.  Gaines  &  Co.,  161 

tical  effect  upon  the  mark,  was  disre-  Fed.  495  (C.  C.  A.). 


414  Acquisition  of  Technical  Trade-Marks 

to  in  the  note.  '^  An  abandoned  trade-mark  may  be  resumed  — 
and  be  reacquired  by  the  former  owner  (if  no  rights  of  others 
intervene),  as  well  as  by  one  who  has  never  used  it.  But  a  trade- 
mark once  used,  and  having  become  familiar  to  the  pubUc,  before 
it  can  be  approi)riated  by  a  subsequent  trader,  must  be  abandoned 
by  the  original  user  so  effectually  that  its  use  by  the  subsequent 
trader  would  not  tend  to  mislead  the  public.  ^^  The  adoption  of  a 
trade-mark  formerly  in  use,  but  abandoned,  must  be  made  in 
good  faith  by  one  who  was  never  a  conscious  infringer.  ^^  If  there 
are  two  or  more  trespassers  when  the  true  owner  of  a  mark  aban- 
dons it,  none  of  them  acquires  title,  since  none  can  claim  a  prior 
use.  2°  If,  on  the  other  hand,  there  is  a  concurrent  use  by  two 
claimants,  and  one  of  them  abandons  the  mark,  then  the  period 
of  sole  use  will  give  good  title  to  the  other. ^^  The  prior  use  of  the 
mark  by  another,  abroad,  is  no  objection,  if  the  claimant  has  first 
used  the  mark  in  this  country."  The  question  of  the  respective 
rights  of  two  traders  who  have  used  the  same  trade-mark  in 
different  territories  is  considered  below. 

§  218.  Length,  Extent  and  Manner  of  Use.  —  It  is  sometimes 
said  that  the  use  of  a  trade-mark  must  have  been  so  persistently 
continuous  as  to  have  identified  the  goods  in  the  public  mind.^^ 
But  if  the  lapse  of  a  period  of  time  is  necessary  before  the  right  to 
the  trade-mark  accrues,  it  is  only  because  the  mark  has  not  been 

^'' Cohen  v.  Nagle,  190  Mass.  4,  11;  adopted  and  used  in  ignorance  of  a 

Levering  Coffee  Co.  v.  Merchant  Coffee  prior  use  will,  after  its  abandonment 

Co.,  39  App.  D.  C.  151;  W.  A.  Gaines  by  the  prior  user,  belong  by  good  title 

&  Co.  V.  E.  Whyte  G.  F.  &  W.  Co.,  107  to  the  subsequent  user. 

Mo.  App.  507.  "°  Seubert  v.    Santaella  &    Co.,  36 

i»  Baglin  v.  Cusenier  Co.,  156  Fed.  App.  D.  C.  447. 

1016  ("Chartreuse").  ^'  Layton  Pure  Food  Co.  v.  Church  & 

»» It  was  held  in  O'Rourke  v.  Central  Dwight  Co.,  182  Fed.  24. 

City  Soap  Co.,  26  Fed.  576,  that  one  ■^'-GorJiam  Mfg.  Co.  v.   Weintraub, 

who  ^\Tongfu]ly  uses  another's  trade-  196  Fed.  957;  Walter  Baker  &  Co.  v. 

mark  does  not  acquire  a  good  title  to  Delapcnha,   160  Fed.   746.     See  also 

it  merely  by  its  abandonment  by  the  Wahles    v.     International    Maniifac- 

original  owner.     There  is  nothing  in  turers  Agency  (U.  S.  Dist.  Ct.  South- 

this  case  to  show  any  intentional  wrong  ern  District  of  N.  Y.,  Dec.  8,  1916), 

on  the  part  of  tlie  defendant.     The  7    Trade-Mark    Rep.   7;    237    Fed. 

ruling  of  this  case  was  disapproved  in  502. 

Mayer  Fertilizer  &  Junk  Co.  v.  V.  C.  "  Layton  Pure  Food  Co.  v.  Church  & 

Chemical  Co.,  35  App.  D.  C.  425,  in  Dwight  Co.,  182  Fed.  24. 
which  it  was  held  that  a  trade-mark 


Length,  Extent  and  Manner  op"  Use  415 

adopted  and  used  in  such  a  manner  as  to  make  it  clear  that  it  is 
intended  to  be  used  as  a  trade-mark.  If  the  trade-mark  purpose 
and  use  is  unquestioned,  it  is  unnecessary  that  the  use  should 
continue  for  any  particular  period  of  time."^  The  use  of  the  mark 
must  not  be  merely  temporary  or  experimental.^^ 

In  considering  the  question  of  extent  of  use,  careful  distinction 
must  be  drawn  between  technical  or  pure  trade-marks,  and  marks 
which  are  not  technical  marks  but  are  in  the  public  domain. 
Where  the  name  or  device  chosen  is  fanciful  and  may  become  a 
technical  trade-mark,  very  sHght  use  will,  in  addition  to  adoption, 
create  a  trade-mark.  Where  the  name  or  device  is  in  the  public 
domain,  the  whole  question  of  use  lies  in  pais.  It  differs  with 
every  case,  and  to  make  out  a  cause  of  action,  the  complainant 
must  show  that  the  name  or  mark  he  is  claiming  as  his  commercial 
signature  has  now  come  to  possess  a  meaning  or  signification  in 
addition  to  its  general  or  public  meaning  or  signification,  which 
new  or  secondary  meaning  is  identified  in  the  public  mind  only 
with  him  and  his  business. 

In  considering  the  manner  in  which  a  trade-mark  is  used  it 
must  be  borne  in  mind  that  no  trade-mark  rights  will  accrue  from 
use  of  a  symbol  in  connection  with  articles  which  are  not  on  the 
market.-^    ''Until  the  thing  is  actually  on  the  market,  marked 

2*  "The  right  to  use  does  not  depend  nize  by  injunction  a  proprietary  right 

upon    any    particular    property    and  in  a  phrase  or  name,  unless  it  has  been 

user;  once  a  trade-mark  is  adopted  used  in  such  circumstances  as  to  pub- 

in   good   faith   and   used,    the   right  licity,  and  length  of  use,  as  to  show  an 

thereto  inures  and  will  prevail  against  intention  to  adopt  it  as  a  trade-mark 

any  subsequent  user."     Walter  Baker  for  a  specific  article." 

Co.  V.  Delapenha,  160  Fed.  746  (C.  C,  20  Baker  v.  Delapenha,  160  Fed.  746- 

N.  J.  1908).    This  case  cites  several  748,  Cross,  D.  J.,  said:  "There  is  no 

earlier  cases  in  which  this  rule  was  positive  proof  to  show  that  the  foreign 

laid   down,   particularly   Kathreiner's  trade-marks  were  ever  placed  upon 

Malzkaffee  v.  Pastor  Kneipp  Med.  Co.,  any  goods  which  were  actually  sold 

82  Fed.  321  (C.  C.  A.,  7th  Cir.).    See  anywhere  prior  to  those  which  came 

also  Breitenbach  v.  Rosenberg,  37  App.  into  the  hands  of  the  defendants  about 

D.  C.  102.  the  1st  of  March,   1905,  which  was 

25  Kohlsr  Mfg.  Co.  v.  Beeshore,  59  several  months  after  the  complainant 

Fed.  572  (C.  C.  A.).    "A  merely  casual  had  adopted  and  used  its  trade-marks, 

use,  interrupted,  or  for  a  brief  period,  and  several  days  after  it  had  filed  its 

would  not  support  a  claim  to  a  trade-  original  application  for  their  registra- 

mark.     Menendcz  v.  Holt,  128  U.  S.  tion.    Upon  this  point  counsel  for  the 

514.    Nor  will  a  court  of  equity  recog-  complainant  in  their  brief  well  say 


416 


Acquisition  of  Technical  Trade-Marks 


by  the  particular  mark  of  the  person  intending  to  acquire  a  title, 
no  property  right  in  the  mark  arises."  '^ 

§  219.  Change  in  Goods  to  which  Trade-Mark  is  Applied. — 
The  goods  to  which  the  mark  is  apphed  must  continue  sub- 
stantially the  same.  For  instance,  where  an  essential  ingredient 
in  a  baking  powder  was  changed,  it  was  held  that  the  right  to  the 


'A  manufacturer  does  not  acquire 
a  trade-mark  l:)y  sending  goods  bearing 
it  to  his  agents  and  by  the  agents 
sending  it  to  subagents,  as  from  its 
nature  a  trade-mark  must  be  used  on 
goods  sold.' " 

Schneider  v.  Williams,  44  N.  J.  Eq. 
391;  14  Atl.  812,  per  Van  Fleet,  V.  C, 
"The  question  to  be  considered  is, 
Does  the  bill  show  a  property  right  in 
the  complainants  and  their  fellow- 
members  in  the  trade-mark  in  ques- 
tion? This  is,  however,  preceded  by 
another,  which  is,  How  may  property 
in  a  trade-mark,  or  a  right  to  a  trade- 
mark, be  acquired?  It  would  seem  to 
be  settled  beyond  question,  that  there 
can  be  no  such  thing  as  a  trade-mark 
distinct  from  and  unconnected  with  a 
vendible  commodity.  As  the  words 
themselves  import,  to  make  the  thing 
selected  or  adopted  answer  the  pur- 
poses of  a  trade-mark,  it  must  be  so 
used  as  to  mark  or  distinguish  some- 
thing which  is  the  subject  of  traffic,  — 
something  which  is  bought  and  sold. 
It  can  have  no  existence  as  property, 
or  a  thing  distinct  from  and  wholly 
unconnected  with  an  article  of  traffic; 
for  in  that  condition,  while  it  might  be 
the  subject  of  traffic  itself,  it  would  be 
simply  as  a  mark  or  name,  and  not  as 
the  distinguishing  mark  of  some  other 
article  of  traffic.  It  is  only  when  it  is 
affixed  to  or  associated  with  some 
vendible  commodity  so  as  to  dis- 
tinguish that  particular  commodity 
from  others  of  the  same  class  or  kind, 
that  it  is  possible  for  it  to  possess 


the  essential  quaUty  of  a  trade- 
mark." 

In  Weener  v.  Brayton,  152  Mass. 
101,  Devens,  J.,  said:  "There  is  no 
exclusive  ownership  of  the  names,  de- 
vices, symbols  or  marks  which  con- 
stitute a  trade-mark,  apart  from  the 
use  or  application  of  them;  but  the 
word  'trade-mark'  is  the  designation 
of  them  when  applied  to  a  vendible 
commodity."  ...  "To  the  validity 
of  a  trade-mark,  so  as  to  entitle  any- 
one to  a  remedy  for  an  invasion 
thereof,  three  things  have  been  held 
necessary:  that  he  must  show  that  he 
has  adopted  some  marks  or  signs  not 
in  use  by  others  to  distinguish  the 
goods  manufactured  or  sold  by  him 
from  those  of  other  manufacturers  or 
traders;  that  these  must  be  applied  to 
some  article  of  traffic;  and  that  such 
articles  must  be  placed  on  the  mar- 
ket." .  .  .  "The  right  to  a  trade- 
mark cannot  exist  as  a  mere  abstract 
right,  independent  of  and  discon- 
nected from  a  business.  It  is  not 
property  as  distinct  from,  but  only  as 
incident  to  the  business." 

In  Grocers  Journal  Co.  v.  Midland 
Pub.  Co.,  127  Mo.  App.  356-366, 
Nortoni,  J.,  wrote:  "And  indeed  it  is 
the  law  that  there  is  not  and  can  be  no 
exclusive  ownership  of  the  words  or 
symbol  which  constitute  a  trade-mark 
apart  from  the  use  or  application  of 
such  words  or  symbol  to  a  vendible 
commodity." 

-'  Schneider  v.  Williams,  44  N.  J. 
Eq.  391. 


Territorial  Extent  of  Trade-Mark  Rights 


417 


trade-mark  applied  to  it  was  lost.^^  A  reasonable  extension  of  the 
mark  to  other  similar  goods  may  be  made  by  the  owner  of  a  mark 
that  denotes  the  maker  rather  than  the  quality  of  the  goods.  ^^ 

§  220.  Territorial  Extent  of  Technical  Trade-Mark  Rights.  — 
There  is  a  serious  conflict  in  the  authorities  on  this  point.  It 
has  sometimes  been  said  that  there  is  no  territorial  limit  to  trade- 
mark rights.  This  is  true  in  the  sense  that  a  trader  can  protect 
his  trade-mark  in  all  the  markets  in  which  he  sells,  without 
territorial  limit,  but  is  it  true  also  that  one  who  has  acquired  a 
technical  trade-mark,  and  used  it  in  a  limited  territory,  has  a 
prior  right  to  its  use  throughout  the  whole  country  without  re- 
gard to  the  rights  of  others  who,  subsequent  to  his  adoption  of  the 
mark,  may  have  used  it  in  an  entirely  different  territory?  In  cases 
of  unfair  competition  it  is  held  that  protection  will  be  limited 
to  territory  in  which  the  applicant's  goods  have  been  sold.^°  It 
was  distinctly  stated  in  Metcalf  v.  Hanover  Star  Milling  Co.,^^ 
that  there  are  no  territorial  limits  in  the  protection  of  a  trade- 


rs Independent  Baking  Powder  Co.  v. 
Boorman,  175  Fed.  448. 

=9  Loonen  v.  Deitsch,  189  Fed.  487 
("Comilo,"  first  used  for  tooth 
brushes,  allowed  to  be  used  by  the 
same  maker  for  other  kinds  of  brushes 
as  well). 

^°  C.  A.  Briggs  Co.  v.  National 
Wafer  Co.,  215  Mass.  100  (citing 
and  discussing  the  authorities).  See 
also  Eastern  Outfitting  Co.  v.  Mann- 
heim, 59  Wash.  428. 

^1  Metcalf  V.  Hanover  Star  Milling 
Co.,  204  Fed.  211  (C.  C.  A.  5th  Cir.). 
Appeal  from  a  decree  of  the  District 
Court  granting  a  temporary  injunc- 
tion restraining  the  defendant  from 
unfair  competition  and  infringing  the 
plaintiff's  trade-mark. 

The  complaint  set  out  that  the 
plaintiff,  Hanover  Star  Milling  Co., 
had  been  engaged  for  27  years  in  the 
manufacture  of  a  popular  grade  of 
flour  known  as  "Tea  Rose,"  and  that 
plaintiff  had  built  up  a  lucrative  busi- 
ness in  such  flour  in  certain  southern 


states.  That  the  defendant  was  selling 
flour  not  made  by  the  plaintiff,  in 
packages  simulating  the  plaintiff's  as 
"Original  Tea  Rose  Flour,"  in  the 
same  territory  in  which  the  plaintiff's 
product  was  sold.  The  defense  set 
up  the  fact  that  the  plaintiff  was  not 
the  first  user  of  the  trade-mark  "Tea 
Rose"  as  applied  to  flour.  Held  that 
as  complainant  was  not  the  originator 
or  first  appropriator  of  the  name  "Tea 
Rose"  as  applied  to  flour,  but  that 
both  the  defendant  and  another  mill- 
ing concern  had  used  the  mark  in  that 
connection  long  prior  to  complainant's 
adoptio-n  thereof,  that  the  plaintiff 
was  not  entitled  to  relief. 

"Nor  is  property  in  a  trade-mark 
limited  to  its  enjoyment  by  territorial 
bounds,  but  may  be  asserted  and  pro- 
tected wherever  the  law  affords  a 
remedy  for  wrongs"  (citing  Saxlehner 
v.  Eisner  Mendelson  Co.,  179  U.  S.  19, 
and  Derringer  v.  Plate,  29  Cal.  292). 
There  is  no  further  discussion  of  the 
question  in  the  opinion. 


418 


Acquisition  of  Technical  Trade-Marks 


mark.  The  same  view  of  the  law  seems  to  be  implied  in  United 
Drug  Co.  V.  Theodore  Recianus  Co?" 

In  Perkins  v.  Apollo  Bros.,^^  we  find  the  following  dictum  — 
''And  it  makes  no  difference  that  the  plaintiff's  mark  may  be  for 
the  present  somewhat  restricted,  nor  that  the  defendant  and  the 
plaintiff  are  not  yet  appealing  to  the  same  trade.  At  any  time 
these  conditions  may  change."  •'*' 

There  is,  however,  a  carefully  considered  opinion  in  the  Circuit 
Court  of  Appeals  for  the  Seventh  Circuit,  Hanover  Star  Milling  Co. 
V.  Allen  &  Wheeler  Co.,^'^  in  which  the  conclusionis  reached  that  even 
a  technical  trade-mark  is  not  ordinarily  entitled  to  protection  out- 
side of  the  territory  in  which  its  owner  has  marketed  his  goods. ^^ 

'2  206  Fed.  570  (D.  C.  Ky.  1913).  "  Hanover  Star  Milling  Co.  v.  Allen 

Plaintiff's  predecessor,  prior  to  1880,      &  Wheeler  Co.,  208  Fed.  513.    Appeal 


adopted  a  trade-mark  for  medicinal 
preparations  and  registered  it  in 
the  Patent  Office  in  1900.  Defend- 
ants, without  any  knowledge  of 
this,  had  from  1883  used  the  same 
trade-mark  for  medicinal  tablets  in  a 
territory  distant  from  that  occupied 
by  the  first  user.  (The  question  of 
territorial  limits  was  not  further  dis- 
cussed.) This  case  is  now  before  the 
United  States  Supreme  Court. 

"  197  Fed.  476,  478. 

'^  The  reasoning  on  which  the  view 
set  forth  in  the  preceding  cases  is  or 
would  most  naturally  be  based,  is  ex- 
pressed in  the  dissenting  opinion  of 
Chadwick,  J.,  in  the  above  cited  unfair 
competition  case  of  Eastern  Outfitting 
Co.  V.  Mannheim,  59  Wash.  428,  as 
follows:  He  objects  to  the  reasoning  of 
the  prevailing  opinion  in  that  it  "pro- 
ceeds upon  the  theory  that  a  business 
once  estabUshed  must  cover  a  whole 
field  in  its  inception,  rather  than  upon 
the  evident  fact,  proven  by  the  history 
of  the  whole  business  world,  that  a  busi- 
ness legitimately  organized  is  entitled 
to  the  protection  of  the  law  in  its  devel- 
opment from  a  small  local  concern  to 
the  larger  concern  into  which  it  had 
the  natural  right  to  grow." 


from  an  order  granting  a  preliminary 
injunction  restraining  the  defendants 
from  infringing  the  plaintiff's  trade- 
mark. 

The  complainant,  Allen  &  Wheeler 
Co.,  had  been  a  manufacturer  of 
flour,  in  Ohio,  since  1872,  and  used  the 
words  "Tea  Rose"  as  a  common-law 
trade-mark.  Its  trade  was  confined 
to  the  territory  north  of  the  Ohio 
River.  The  defendant  conducted  a 
flour  mill  in  Illinois,  and  since  1893 
has  used  the  words  "Tea  Rose"  in 
marking  its  flour  sacks.  The  defend- 
ant adopted  the  "Tea  Rose"  mark  in 
good  faith  with  no  knowledge  that 
anyone  else  was  using  the  brand.  It 
built  up  an  extensive  business  in  the 
southern  States.  The  court  found  that 
in  the  flour  trade  in  the  southeastern 
territory  the  mark  "Tea  Rose"  had 
come  to  mean  the  defendant's  flour 
and  nothing  else. 

Held,  that  the  complainant  was  not 
entitled  to  an  injunction  restraining 
the  defendant  from  using  the  name 
"Tea  Rose"  in  the  southern  States. 

'«  Thomas  G.  Carroll  &  Sons  Co.  v. 
Mcllvainc  &  Baldwin,  Inc.,  171 
Fed.  125;  aff'd  183  Fed.  22.  "Balti- 
more   Club"     as  a  trade-mark    for 


Territorial  Extent  of  Trade-Mark  Rights        419 

The  following  qualification  of  the  rule  suggested  by  Baker,  J., 
in  his  opinion  in  Hanover  Star  Milling  Co.  v.  Allen  &  Wheeler  Co., 
should  be  noted  —  "If  the  junior  has  not  established  his  trade 
in  good  faith,  or  if,  having  appropriated  certain  marks  in  an 
honest  belief,  he  should  attempt  to  forestall  the  elder  trader  by- 
hastening  into  markets  the  elder  was  arranging  to  occupy,  it 
might  be  that  equity  would  have  no  difficulty  in  recognizing  an 
inchoate  right  in  the  elder  to  precedence  and  dominance,  for  hon- 
esty and  fair  dealing  should  always  be  a  strong  appeal  to  con- 
science" " 

The  United  States  Supreme  Court  recently  passed  on  the  ques- 
tions involved  in  the  Hanover  Star  Milling  Company  cases.  ^^ 
Its  decision  upholds  the  rights  of  the  Hanover  Co.,  reversing  the 
Circuit  Court  of  Appeals  of  the  Fifth  District  ^^  and  afl?irming  the 
view  of  the  Circuit  Court  of  Appeals  of  the  Seventh  District.^" 
Mr.  Justice  Pitney  in  delivering  the  opinion  wrote  in  reference  to 
the  territorial  limits  of  trade-mark  protection  as  follows: 

''That  property  in  a  trade-mark  is  not  limited  in  its  enjoyment 
by  territorial  bounds,  but  may  be  asserted  and  protected  wherever 
the  law  affords  a  remedy  for  wrongs,  is  true  in  a  limited  sense. 
Into  whatever  markets  the  use  of  a  trade-mark  has  extended,  or 
its  meaning  has  become  known,  there  will  the  manufacturer  or 
trader  whose  trade  is  pirated  by  an  infringing  use  be  entitled  to 
protection  and  redress.  But  this  is  not  to  say  that  the  proprietor 
of  a  trade-mark,  good  in  the  markets  where  it  has  been  employed, 
can  monopolize  markets  that  his  trade  has  never  reached  and 
where  the  mark  signifies  not  his  goods  but  those  of  another.  We 
agree  with  the  court  below  (208  Fed.  Rep.  519)  that  'Since  it  is 
the  trade,  and  not  the  mark,  that  is  to  be  protected,  a  trade-mark 
acknowledges  no  territorial  boundaries  or  municipahties  or  states 
or  nations,  but  extends  to  every  market  where  the  trader's  goods 
have  become  known  and  identified  by  his  use  of  the  mark.    But 

whiskey,  although  assumed  to  have  "  208  Fed.  513,  522. 

been  first  used  in  Baltimore,  could  be  ^^  Hanover  Star  Milling  Co.  v.  Met- 

claimed  as  a  trade-mark  by  a  New  calf,  240  U.  S.  403. 

York  dealer  who  had  for  a  long  time  ^^  Metcalfv.  Hanover  S.  Milling  Co., 

dealt  in  whiskey  under  that  name,  and  204  Fed.  211, 

built  up  a  large  trade  without  protest,  ^°  Hanover  S.  Milling  Co.  v.  Allen  & 

while  the  Baltimore  trader's  trade  had  Wheeler  Co.,  208  Fed.  513. 

been  local  and  never  extended  to  the 

neighborhood  of  New  York. 


420  Acquisition  of  Technical  Trade-Marks 

the  mark,  of  itself,  cannot  travel  to  markets  where  there  is  no 
article  to  wear  the  badge  and  no  trader  to  offer  the  article.' 

"  To  say  that  a  trade-mark  right  is  not  limited  in  its  enjoyment 
by  territorial  bounds,  is  inconsistent  with  saying  that  it  extends  as 
far  as  the  sovereignty  in  which  it  has  been  enjoyed.  If  the  ter- 
ritorial bounds  of  sovereignty  do  not  limit,  how  can  they  enlarge 
such  a  right?  And  if  the  mere  adoption  and  use  of  a  trade-mark 
in  a  hmited  market  shall  (without  statute)  create  an  exclusive 
ownership  of  the  mark  throughout  the  bounds  of  the  sovereignty, 
the  question  at  once  arises,  'What  sovereignty?'  " 

It  should  be  remembered  that  this  case  involved  parties  both 
of  which  owned  sustantial  equities  in  the  name  Tea  Rose  as  as- 
sociated with  their  product.  The  case  is  most  unusual  in  many 
features.  It  is  doubtful  if  it  is  authority  for  the  doctrine  that  the 
first  adopter  and  user  of  a  true  trade-mark  could  not  oust  a  later 
user  of  the  mark  from  territory  he  (the  first  user)  had  not  actually 
occupied,  provided  he  moved  with  reasonable  promptness. 

For  further  discussion  of  this  question  see  chapter  on  ''Reme- 
dies." 

§  221.  Trade-mark  Protection  Limited  to  Goods  of  the  Same 
Class.  —  Since  the  purpose  of  the  trade-mark  is  to  protect  the 
business  in  which  it  is  used,  it  follows  that  the  owner  of  the 
trade-mark  cannot  prevent  its  use  by  another  trader  for  goods 
of  an  entirely  different  class.  The  law  places  no  inhibition 
upon  the  use  of  the  same  mark  so  long  as  the  goods  to  which  this 
applies  are  so  distinctive  in  class  and  quality  as  to  forbid  the  prob- 
^ ability  of  confusion  in  trade. "^^ 

The  question  is  where  to  draw  the  line  between  goods  that  are 
sufficiently  similar  to  those  of  the  owner  of  the  trade-mark  to 
create  confusion  in  the  public  mind,  and  those  that  are  so  dis- 
similar that  there  is  no  probability  of  such  confusion.  The  general 
rule  is  stated  as  being  that  the  owner  "must  have  used  his  trade- 
mark on  the  same  class,  but  not  necessarily  on  the  same  species 
of  goods,  as  the  alleged  infringer  in  order  to  entitle  him  to  its  pro- 
tection against  infringement.""*^ 

The  test  is  whether  the  public  is  likely  to  be  misled  into  sup- 
posing that  the  competitor's  goods,  though  not  of  just  the  same 

^'  (7.  &  J.  Tire  Co.  v.  /.  G.  Motor  *^  Layton  Pure  Food  Co.  v.  Chmch  & 
Car  Co.,  39  App.  D.  C.  508,  511  D«;?V/i<  Co.,  182  Fed.  35,  C.  C.  A.,  8th 
(1913).  Ct. 


Protection  Limited  to  Goods  of  Same  Class       421 

description,  are  nevertheless  the  goods  of  the  owner  of  the  trade- 
mark.'*^ It  has  been  said  that  the  benefit  of  the  doubt  where  there 
is  a  question  whether  or  not  the  goods  are  of  the  same  class,  will 
be  given  to  the  owner  of  the  trade-mark. ^^  To  illustrate,  it  has 
been  held  that  the  first  named  goods  in  the  following  list  are 
sufficiently  near  in  description  or  class  to  the  second  named  goods, 
to  entitle  the  dealer  in  the  first  named  to  protection  in  his  trade- 
mark: 

Shovels  to  pickaxes.  ^^ 

Baking  powder  to  baking  soda  and  saleratus.'*^ 

Baking  powder  to  baking  soda.^^ 

Chewing  tobacco  to  cigarettes.'*^ 

Toilet  brushes  to  tooth  brushes.^' 

Sweaters  to  knitted  underwear. ^° 

''Half  and  Half"  to  pale  ale.^^ 

In  the  following  list  the  first  named  goods  have  been  held  to 
belong  to  a  different  class  from  the  second  named  goods  so  that 
the  owner  of  the  trade-mark  applied  to  the  latter  was  not  entitled 
to  prevent  the  use  of  the  same  mark  on  the  former: 

Cotton  cloths  and  prints  and  calicoes.^^ 

Ginger  snaps  to  soda  crackers  and  jumbles  to  drops. ^^ 

*^  It  is  a  recognized  rule  that  the  *=  Collins  Co.  v.  Oliver  Ames  &  Sons 

different  species  of  goods  are  of  the  Corp.,  18  Fed.  561. 

same  class  when  a  certain  trade-mark  *^  Church  &  Dwight  Co.  v.  Russ,  99 

used  on  them  would  enable  an  un-  Fed.  276. 

scrupulous  dealer  to  readily  palm  off  *'' Layton  Pure  Food  Co.  v.  Church 

on    an    unsuspecting    purchaser    the  &  Dwight  Co.,  182  Fed.  35,  C.  C. 

goods   "of  one  make  when  he  sup-  ^^  American  Tobacco  Co.  v.  Polacsek, 

posed  he  was  receiving  the  goods  of  170   Fed.    117;    see   also    Carroll   v. 

another."    N.  Wolf  &  Sons  v.  Lord  &  Ertheiler,  1  Fed.  688. 

Taylor,  41  App.  D.  C.  514,  515  (1914).  «  Florence  Manf.  Co.  v.  T.  G.  Dowd 

**  "  Courts  should  not  be  astute  to  &  Co.,  178  Fed.  73  (C.  C.  A.), 

recognize  in  favor  of  an  infringer  fine  ^^  Northwestern     Knitting     Co.     v. 

distinctions  between  different  articles  Garon,  112  Minn.  321. 

of  merchandise  of  the  same  general  ^^  Bass,  Ratcliff  &  Grettan  Co.  v. 

nature,  and  should  resolve  against  the  Feigenspan,  96  Fed.  206,  C.  C,  N.  Y. 

wrongdoer  any  fair  doubt  whether  the  1899. 

pubUc  may  or  may  not  be  deceived  ^^  Amoskeag  Mfg.  Co.  v.  Garner,  55 

through  the  appHcation  of  the  spurious  Barb.  151. 

symbol."    Bass,  Ratcliff  &  Gretton  Co.  ^^  Va.  Baking  Co.  v.  Southern  Biscuit 

V.   Feigenspan,  96  Fed.  206  (C.  C,  Works,  111  Va.  227. 
N.  Y.  1899). 


422 


Acquisition  of  Technical  Trade-Marks 


Cheese  to  butter.^/ 

Ice  cream  to  milk  and  milk  products. ^^ 

Fire  extinguishers  to  automobiles."^ 

In  protecting  a  trade-mark  against  its  use  on  goods  of  a  some- 
what different  class,  it  is  sometimes  considered  that  a  trader  has  a 
reasonable  right  to  extend  his  trade  under  a  trade-mark  which  his 
efforts  in  the  past  have  made  valuable  to  a  wider  line  of  goods  than 
those  in  which  he  may  deal  at  the  time  he  seeks  protection  for  his 
trade-mark."  There  is  also  an  element  of  injury  to  reputation, 
in  the  use  of  a  trade-mark  by  competitors  on  similar  but  not 
identical  goods,  which  is  sometimes  given  weight,  although  there 
may  not  be  any  actual  diversion  of  trade. ^^ 


^*  Lawrence  v.  P.  E.  Sharpless  Co., 
203  Fed.  762. 

5s  Borden's  Ice  Cream  Co.  v.  Borden's 
Condensed  Milk  Co.,  201  Fed.  510 
(C.  C.  A.  1912). 

^^  Simplex  Auto  Co.  v.  Kahnweiler, 
162  App.  Div.  480. 

"  This  point  was  suggested  in  the 
Collins  Co.y. Oliver  Ames  &  Sons  Corp., 
18  Fed.  561.  However,  in  the  recent 
case  of  Borden's  Ice  Cream  Co.  v. 
Borden's  Condensed  Milk  Company,  201 
Fed.  510,  it  was  held  that  the  possibil- 
ity that  the  complainant  might  extend 
its  business  so  as  to  include  the  making 
of  ice  cream  was  not  sufficient  to 
entitle  it  to  restrain  the  use  of  the 


name  Borden's  for  ice  cream  by  the 
defendant. 

^8  It  is  held  in  a  case  under  the 
Federal  Act  that  coffee  and  cocoa  are 
sufficiently  similar  in  class  to  prevent 
a  registration  of  the  same  mark  for 
coffee  as  was  already  in  use  for  cocoa, 
on  the  ground  chiefly  of  the  possibihty 
of  the  mark  being  applied  to  an  in- 
ferior grade  of  coffee  and  so  injuring 
the  reputation  of  the  cocoa  manufac- 
turer. In  the  above  cited  case  of  Bor- 
den's Ice  Cream  Company  v.  Borden's 
Condensed  Milk  Company  it  was  con- 
sidered that  it  was  premature  to 
consider  the  possibihty  of  damage  to 
reputation  since  the  defendant  had 
not  begun  to  sell  any  goods. 


\ 


CHAPTER  XVI 
Registered  Trade-Marks  Under  the  U.  S.  Trade-Mark  Act 

Section  222.  Introductory. 

223.  Advantages  of  registration. 

224.  History  of  U.  S.  trade-mark  legislation;  constitutionality. 

225.  Registration  by  owners. 

226.  Declaration. 

227.  Designation  of  agent  by  non-residents. 

228.  Foreign  applicants. 

229.  Unregistrable  trade-marks. 

230.  Who  may  oppose. 

231.  Interference. 

232.  Appeals  to  the  commissioner. 

233.  Appeals  to  the  Courts. 

234.  Assignment  of  trade-mark. 

235.  Certificates  of  registration. 

236.  Period  of  protection. 

237.  Cancellation  of  registration. 

238.  Fees. 

239.  Repayment  of  fees. 

240.  Liability  for  infringement. 

241.  Jurisdiction  of  the  courts. 

242.  Appeals  to  the  United  States  Supreme  Court. 

243.  Scope  of  court's  powers. 

244.  Court  may  destroy  infringing  marks. 

245.  Trade-marks  fraudulently  used. 

246.  Cancellation  of  the  registration  of  a  trade-mark  by  a  court  in  an 

equity  suit. 

247.  Effect  of  the  act  on  prior  rights. 

248.  Pending  applications. 

249.  Registration  fraudulently  procured. 

250.  Rules  for  conducting  proceedings. 

251.  Importation  of  articles  bearing  infringing  marks. 

252.  Notice  of  registration. 

253.  Definitions. 

254.  When  act  takes  effect. 

§  222.  Introductory.  —  The  law  of  trade-marks  in  this  country 
has  until  recent  years  been  almost  exclusively,  and  is  still  in  large 
measure,  a  development  of  the  conamon  law.     The  preceding 

423 


424  Registered  Trade-Marks 

chapters  deal  in  general  with  common-law  trade-marks  irrespective 
of  statutory  provisions.  Trade-mark  statutes  have,  as  tlicir  pur- 
pose, not  the  creation,  but  the  regulation  of  trade-mark  rights  l^y 
providing  remedies  for  their  enforcement." 

In  Great  Britain  the  first  act  for  the  registration  of  trade- 
marks, was  passed  in  1875.  The  statutory  system  has  become 
a  very  prominent  feature  in  the  law  of  trade-marks  in  that  coun- 
try, and  a  large  proportion  of  the  English  decisions  regarding 
trade-mark  rights,  involve  the  construction  of  the  statutes  re- 
lating thereto.  In  this  country,  however,  trade-mark  statutes, 
state  as  well  as  Federal,  play  a  less  important  part. 

§  223.  Advantages  of  Registration.  —  As  we  have  seen,  it  is  not 
necessary  to  register  a  trade-mark  under  the  Federal  Act  in  order 
to  be  entitled  to  protection.  There  are,  however,  important 
advantages  of  various  kinds  to  be  secured  by  such  registration, 
some  of  which  are  the  following: 

1.  The  necessity  of  proving  adoption  and  continued  use  is 
avoided,  since  the  registration  creates  a  presumption  of  such 
adoption  and  use,  sufficient  to  make  a  prima  facie  case. 

2.  The  registration  gives  effectual  constructive  notice  to  the 
public  of  the  claim  to  the  trade-mark  and  tends  to  give  actual 
notice,  as  the  proposed  trade-mark  must  be  published  at  least 
once  in  the  Official  Gazette  of  the  United  States  Patent  Office. 

3.  The  applicant  has  the  benefit  of  the  examination  of  his  mark 
by  the  Patent  Office  before  it  is  registered  and  of  the  publication, 
w^hich  tends  to  elicit  oppositions,  if  there  be  any,  which  tends  to 
effect  with  promptness  the  determination  of  doubtful  questions 
of  validity. 

4.  Registration  is  prima  facie  evidence  of  the  validity  of  the 
mark. 

5.  The  registered  owner  may  in  some  instances  recover  triple 
damages. 

G.  Suit  may  be  brought  in  the  Federal  courts  to  protect  a  mark 
which  is  registered  without  restriction  as  to  amount  involved  or 
proving  diversity  of  citizenship. 

Trade-mark  statutes  have  made  no  change  in  the  law  govern- 
ing common-law  trade-marks  or  in  the  law  relating  to  unfair  com- 
petition. 

"Registration  under  the  statute  confers  no  new  rights  to  the 
""  Carroll  v.  Mcllvaine,  171  Fed.  125. 


Advantages  of  Registration  425 

mark  claimed  or  any  greater  rights  than  already  exist  at  common 
law  without  registration."  ^ 

The  effect  of  the  Federal  act  is  threefold:  (a)  it  creates  a  per- 
manent record  of  the  date  of  adoption  and  use  of  a  mark;  (b)  gives 
jurisdiction  to  the  Federal  courts  where  all  parties  are  citizens 
of  the  same  state;  ^  (c)  enables  treaty  stipulations  to  be  carried 
out.^  Common-law  rights  as  to  trade-marks  remain  unaffected, 
for  the  statute  expressly  states:  ''Nothing  in  this  act  shall  prevent, 
lessen,  impeach  or  avoid  any  remedy  at  law  or  in  equity,  which 
any  party  aggrieved  by  any  wrongful  use  of  any  trade-mark 
might  have  had,  if  the  provisions  of  this  chapter  had  not  been 
enacted."  ^ 

The  same  is  true  of  the  English  Trade-Marks  Act.  Speaking 
of  it,  Cotton,  L.  J.,  says  that  formerly  when  a  court  passed  on  a 
trade-mark  question,  a  trade-mark  signified  a  ''mark  to  the  use 
of  which  the  plaintiff  had  by  user  entitled  himself,  and  the  in- 
junction was  obtained  where  the  defendant  was  marking  his  goods 
with  a  mark  so  suxtilar  to  that  used  by  the  plaintiffs  as  to  be  cal- 
culated to  pass  them  off  as  the  goods  of  the  plaintiffs.  Of  course, 
in  order  to  enable  the  court  to  arrive  at  that  conclusion,  it  had  to 
be  shown  that  the  plaintiffs  had  for  a  period  of  time  been  selling 
their  goods  with  a  mark  which  distinguished  them.  For  the  pur- 
pose of  seeing  whether  or  not  the  mark  upon  their  goods  did  dis- 
tinguish them,  it  was  of  course  necessary  to  see  what  marks  were 
in  common  use  by  the  trade  as  regards  that  particular  class  of 
goods,  and  then,  having  ascertained  that  fact,  it  had  to  be  con- 
sidered whether,  having  regard  to  the  marks  which  were  in  com- 
mon use,  what  was  being  done  by  the  defendants  was  calculated 
to  pass  off  their  goods  as  the  goods  of  the  plaintiffs.  How  is  this 
altered?  It  was  contended  in  argument  that  the  Trade-Marks 
Act  has  entirely  altered  the  question.  I  do  not  say  that  the  effect 
of  the  act  may  not  be  to  give  a  person  an  absolute  right  to  the 
registered  trade-mark  so  as  to  entitle  him  to  restrain  another  per- 
son from  selling  goods  with  that  mark  upon  them  without  ref- 
erence to  the  question  whether  or  not  the  goods  are  sold  under 
such  circumstances  as  to  pass  them  off  as  the  goods  of  the  plain- 
tiffs.   I  say  nothing  upon  that  point,  but  I  say  that,  in  my  opin- 

1  28  Am.  &  Eng.  Encyc.  435.  ^  jj.    S.    v.    Diiell,    17     App.    Cas. 

^  Hennessy  v.  Branuschweiger  &  Co.,      D,  C.  575. 
89  Fed.  664-1898  (C.  C.  Cal.).  "  Act  of  1905,  §  23. 


420  Registered  Trade-Marks 

ion,  the  act  in  no  way  interferes  with  the  exercise  by  a  court  of 
equity  of  its  old  jurisdiction.  What  the  act  does,  as  I  under- 
stand it,  is  this:  It  enables  persons  to  register  a  trade-mark,  and 
when  they  register  it  that  is  equivalent  to  evidence  of  public  use 
of  it  by  them,  and  during  five  years  the  registration  is  prima 
facie  evidence  of  their  exclusive  right  to  it,  and  after  the  five 
years  it  is  conclusive  evidence  of  such  right."  ^ 

Registration  does  not  in  any  way  conclude  any  property  rights 
in  a  mark.  All  parties  interested  are  free  after  registration  to 
maintain  whatever  rights  they  may  have  in  law  or  in  equity.^ 

§  224.  History  of  U.  S.  Trade-mark  Legislation;  Constitution- 
ality. —  The  first  Federal  Trade-Mark  Act  was  passed  in  1870, 
and  provided  for  the  registration  of  trade-marks  generally  without 
regard  to  whether  they  were  used  in  interstate  or  foreign  commerce 
or  not.  Although  this  act  seems  to  have  been  assumed  by  the 
courts,  for  some  years,  to  be  valid,  it  was  held  unconstitutional 
in  the  litigation  known  as  The  Trade-Mark  Cases,  100  U.  S. 
82,  on  the  ground  that  Congress  had  no  authority  to  regulate 
instruments  of  trade  not  used  in  interstate  or  foreign  commerce. 

In  1881  a  new  act  was  passed  providing  for  the  registration  and 
protection  of  trade-marks  used  in  interstate  and  foreign  com- 
merce. In  1905  the  scope  of  the  act  was  greatly  extended, 
making  the  machinery  of  the  law,  and  the  remedies  provided, 
more  adequate  for  the  protection  of  trade-mark  owners.  There 
appears  to  be  no  doubt  as  to  the  constitutionality  of  this  act  as  a 
whole,  and  up  to  the  present  time  no  provision  of  it  has  been  held 
to  be  unconstitutional. 

The  various  sections  of  this  act  are  given  below  with  comments. 

Statements  in  the  text  of  the  Act,  written  in  italics,  indicate 
Amendments. 

§  225.  Registration  by  Owners.  —  The  first  section  of  the  Act 
is  as  follows : 

"  AN  ACT  To  authorize  the  registration  of  trade-marks  used 
in  commerce  with  foreign  nations  or  among  the  several 
States  or  with  Indian  tribes,  and  to  protect  the  same. 

"  Be  it  enacted  by  the  Senate  and  House  of  Representatives  of 
the  United  States  of  America  in  Congress  assembled.  That  the 

<i  Mitchell  v.  Henry,  15  Ch.Div.  1^1.      Silver   Co.,   30  App.   D.   C.   97-105- 
"  Wm.   A.   Rogers   v.   International      1907. 


Registration  by  Owners  427 

owner  of  a  trade-mark  used  in  commerce  with  foreign  na- 
tions, or  among  the  several  States,  or  with  Indian  tribes,  pro- 
vided such  owner  shall  be  domiciled  within  the  territory  of 
the  United  States,  or  resides  in  or  is  located  in  any  foreign 
country  which,  by  treaty,  convention,  or  law,  affords  similar 
privileges  to  the  citizens  of  the  United  States,  may  obtain 
registration  for  such  trade-mark  by  complying  with  the  fol- 
lowing requirements:  First,  by  filing  in  the  Patent  Office  an 
application  therefor,  in  writing,  addressed  to  the  Commis- 
sioner of  Patents,  signed  by  the  applicant,  specifying  his 
name,  domicile,  location,  and  citizenship;  the  class  of  mer- 
chandise and  the  particular  description  of  goods  comprised 
in  such  class  to  which  the  trade-mark  is  appropriated;  a 
statement  of  the  mode  in  which  the  same  is  applied  and 
affixed  to  goods,  and  the  length  of  time  during  which  the 
trade-mark  has  been  used;  a  description  of  the  trade-mark 
itself  shall  be  included,  if  desired  by  the 
%e™T8!^?9oa  *''*  "^  applicant  or  required  by  the  commissioner, 
provided  such  description  is  of  a  character 
to  meet  the  approval  of  the  commissioner.     With  this  state- 
ment shall  be  filed  a  drawing  of  the  trade-mark,  signed  by  the 
applicant,  or  his  attorney,  and  such  number  of  specimens  of 
the  trade-mark  as  actually  used  as  may  be  required  by  the 
Commissioner   of   Patents.     Second,    by   paying   into    the 
Treasury  of  the  United  States  the  sum  of  ten  dollars,  and 
otherwise  complying  with  the  requirements  of  this  act  and 
such  regulations  as  may  be  prescribed  by  the  Commissioner 
of  Patents." 
The  Act  provides  for  registration  of  a  trade-mark  by  owners 
domiciled  in  the  United  States,  or  in  foreign  countries  which  by 
treaty  or  law  afford  similar  privileges  to  citizens  of  the  United 
States.     As  it  does  not  prescribe  what  may  be  valid  trade- 
marks, but  simply  authorizes  the  registration  of  trade-marks, 
such  registration  can  in  no  way  validate  a  trade-mark  which  was 
not  previously  valid.     The  validity  of  a  trade-mark  must  depend 
upon  general  principles  and  rules  of  law,  and  not  upon  its  regis- 
tration.^" 

The  rights  which  a  person  obtains  by  registration  of  a  trade- 
mark under  the  statute  have  been  held  to  be  coterminous  with 
«"  Planten  v.  Gedney,  221  Fed.  281. 


428  Registered  Trade-Marks 

the  territory  of  the  United  States.*^''  The  privilege  to  foreigners 
does  not  give  them  the  right  to  register  a  trade-mark  used  in  con- 
nection with  a  product  manufactured  by  them  in  the  United 
States,  which  a  citizen  of  the  United  States  would  not  be  per- 
mitted to  manufacture  in  the  country  of  which  the  foreigner  is  a 
citizen.^ 

In  order  to  register  a  trade-mark,  the  owner  is  required  to  file 
in  the  Patent  Office,  an  application  in  writing.  This  apphcation 
must  be  addressed  to  the  Commissioner  of  Patents,  signed  by  the 
applicant,  specifying  his  name,  domicile,  location  and  citizenship. 
In  addition,  the  application  must  contain  a  description  of  the 
goods  to  which  the  trade-mark  is  to  be  applied,  a  description  of 
the  trade-mark  itself,  a  statement  of  the  mode  in  which  the  trade- 
mark is  to  be  applied  to  the  goods  in  connection  with  which  it  is 
used,  and  the  length  of  time  the  trade-mark  has  been  used. 
The  description  of  the  goods  to  which  the  trade-mark  is 
appHed  must  be  set  out  in  the  application  with  certainty.  An 
application  containing  a  description  which  would  include  in  its 
terms  all  kinds  of  games  and  sporting  goods  has  been  held  to  be 
too  broad.^  The  goods  to  which  a  trade-mark  is  affixed  must 
conform  to  the  description  of  the  merchandise  set  out  in  the 
application  in  order  to  entitle  the  owner  to  protection.^     The 

6^  Standard  Brewery  Co.  v.  Interboro  vides  that  the  appHcant  shall  specify 

Brewing  Co.,  229  Fed.  543.    Writ  of  '  the  class  of  merchandise  and  the  par- 

certiorari  has  been  granted  in  this  case,  ticular  description  of  goods  comprised 

'  De  Nobili  v.  Leanda,  198  Fed.  341.  in  such  class  to  which  the  trade-mark 
The  court  held  that  an  ItaHan  citizen  is  appropriated  *  *  *  a  descrip- 
was  not  entitled  to  register  a  trade-  tion  of  the  trade-mark  itself,'  and  'a 
mark  used  in  connection  with  tobacco  statement  of  the  mode  in  which  same 
manufactured  by  him,  for  the  reason  is  applied  and  affixed  to  goods.  *  *  *' 
that  an  American  citizen  would  not  Act  Feb.  20,  1905,  33  Statutes  at 
be  permitted  to  register  a  mark  in  Large,  pt.  1,  c.  592,  p.  724  (U.  S. 
connection  with  tobacco  manufactured  Comp.  8t.  Supp.  1911,  p.  1459).  In 
in  Italy.  In  Italy,  there  is  a  govern-  compliance  with  this  requirement  com- 
ment monopoly  in  the  manufacture  of  plainants  particularly  describe  their 
tobacco.  so-called  goods  as  'a  weekly  periodical 

^  In  re  Spalding  &  Bros.,  27  App.  devoted  to.  fiction.'     To  entitle  this 

D.  C.  314-1906.  publication  to  protection  under  the 

^  Atlas  Mfg.  Co.  v.  Street  &  Smith,  trade-mark  granted,  it  must  conform 

204   Fed.   398    (1913);   Van   Valken-  to  the  description  filed;  it  must  be  a 

burgh,  District  J.,  wrote,  "The  trade-  periodical.    In  Smith  et  al.  v.  Hitchcock, 

mark  registered  is  'Nick  Carter.'    The  226  U.  S.  53,  33  Sup.  Ct.  6,  the  Su- 

law  authorizing  such  registration  pro-  preme    Court    held  that   'Tip    Top 


Declaration  429 

trade-mark  must  be  applied  or  affixed  to  goods.  ^^  Mere  use  of 
the  trade-mark  in  connection  with  the  owner's  business  will  not 
be  sufficient  to  entitle  him  to  protection  against  infringement.^^ 

The  section  further  provides  for  the  filing  of  a  drawing  of  the 
trade-mark  and  such  number  of  the  specimens  of  the  trade-mark, 
as  actually  used,  as  the  commissioner  may  require.  It  is  not 
within  the  power  of  the  commissioner  to  require  the  owner  to 
make  his  drawing  conform  to  a  specimen  of  a  trade-mark,  which 
has  been  filed  ^-  but  he  may  require  the  applicant  to  strike  out  the 
description  of  his  trade-mark  from  his  petition  and  refer  only  to 
his  drawing.  ^^ 

§  226.  Declaration. 

'*  Sec.  2.  That  the  application  prescribed  in  the  foregoing 
section,  in  order  to  create  any  right  whatever  in  favor  of  the 
party  filing  it,  must  be  accompanied  by  a  written  declaration 
verified  by  the  applicant,  or  by  a  member  of  the  firm  or  an 
officer  of  the  corporation  or  association  applying,  to  the 
effect  that  the  applicant  believes  himself  or  the  firm,  corpo- 
ration, or  association  in  whose  behalf  he  makes  the  applica- 
tion to  be  the  owner  of  the  trade-mark  sought  to  be 
registered,  and  that  no  other  person,  firm,  corporation,  or 
association,  to  the  best  of  the  applicant's  knowledge  and  belief, 
has  the  right  to  use  such  trade-mark  in 
%er^%o^  "'  °'  the  United  States,  either  in  the  identical 
form  or  in  such  near  resemblance  thereto 
as  might  be  calculated  to  deceive;  that  such  trade-mark  is 
used  in  commerce  among  the  several  States,  or  with  foreign 
nations,  or  with  Indian  tribes,  and  that  the  description  and 
drawing  presented  truly  represent  the  trade-mark  sought  to 

Weekly,'  issued  by  these  same  com-  for  a  trade-mark,  to  give  not  only  a 

plainants,    and    practically    identical  description  of  the  trade-mark  itself  but 

in  structure  with  the  'Nick  Carter'  'a  statement  of  the  mode  in  which  the 

publication,  is  not  a  periodical,  but  a  same  is  appHed  and  affixed  to  goods.'" 

book."  Consumers'   Co.   v.  Hydrox  Chemical 

10  Diederich   v.   Schneider  Co.,   195  Co.,  40  App.  D.  C.  284-1913. 

Fed.  35,  Hunger,  District  J.,  "It  will  ^^  Diederich  v.  Schneider  Co.,   195 

be  observed  that  this  section  contem-  Fed.  35. 

plates  that  the  trade-mark  is  to  be  ^^  In  re  Standard  Underground  Cable 

affixed  to  the  goods  which  are  used  Co.,  27  App.  D.  C.  320. 

in  the  commerce  specified,  as  it  re-  "  In  re  Atkins  &  Co.,  29  App.  D.  C. 

quires  the  applicant  in  his  application  385. 


430  Registered  Trade  Marks 

be  registered.     If  the  applicant  resides  or  is  located  in  a 
foreign  country,  the  statement  required  shall,  in  addition  to 
the  foregoing,  set  forth  that  the  trade-mark  has  been  regis- 
tered by  the  applicant,  or  that  an  application  for  the  regis- 
tration thereof  has  been  filed  by  him  in  the  foreign  country 
in  which  he  resides  or  is  located,  and  shall  give  the  date  of  such 
registration,  or  the  application  therefor,  as  the  case  may  be, 
except  that  in  the  application  in  such  cases  it  shall  not  be  neces- 
sary to  state  that  the  mark  has  been  used  in  commerce  with 
the  United  States  or  among  the  States  thereof.     The  verifica- 
tion required  by  this  section  may  be  made  before  any  person 
within  the  United  States  authorized  by  law  to  administer 
oaths,  or,  when  the  applicant  resides  in  a  foreign  country, 
before  any  minister,  charge  d'affaires,  consul,  or  commercial 
agent  holding  commission  under  the  Government  of  the 
United  States,  or  before  any  notary  public,  judge,  or  magis- 
trate having  an  official  seal  and  authorized  to  administer 
oaths  in  the  foreign  country  in  which  the  applicant  may  be 
whose  authority  shall  be  proved  by  a  certificate  of  a  diplo- 
matic or  consular  officer  of  the  United  States." 
The  second  section  of  the  Act  provides  that  the  application 
for  registration  must  be  accompanied  by  a  written  declaration 
verified  by  the  applicant  or  by  a  member  of  the  firm  or  officer 
of  the  corporation  or  association  appljdng,  to  the  effect  (a)  that  the 
applicant  is  the  owner  of  the  trade-mark  sought  to  be  registered, 
(b)  that  no  other  person  has  the  right  to  use  such  trade-mark,  (c) 
that  the  trade-mark  is  used  in  commerce  among  the  several 
states  or  with  foreign  nations  or  with  Indian  tribes,  and  (d)  that 
the  description  and  drawing  presented  truly  represent  the  mark 
sought  to  be  registered. 

It  follows  from  this  requii'ement  that  mere  prior  use  of  a  trade- 
mark by  its  owner  will  not  preclude  him  from  registration,  as 
the  section  makes  it  necessary  for  an  applicant  to  establish 
his  right  to  a  trade-mark  by  proof  of  use.*^     To  establish  trade- 

This  section  was  amended  Feb.  18,  Independent  Brewing  Co.  {supra),  in 

1909.  these  words :  "  By  section  2,  in  order  to 

^*  G.  Heilman  Brewing  Co.  v.  Inde-  procure  registration,  he  (the  owner  of 

pendent  Brewing  Co.,   191   Fed.  489.  a  trade-mark)  must  show  that  such 

Wolverton,  District  J.,  refers  to  this  trade-mark    is    used     in     commerce 

section  in  G.  Heilman  Brewing  Co.  v.  among  the  several  states  or  witliin  for- 


Designation  of  Agent  by  Non-Residents  431 

mark  rights  it  is  not  necessary  to  prove  use  over  a  long  period. 
Use  is  almost  entirely  a  question  to  be  decided  on  the  facts  of 
each  case.  No  general  rule  can  be  laid  down  on  this  question,  ^^ 
If  an  applicant  resides  in  a  foreign  country  he  must  set  forth 
that  the  trade-mark  has  been  registered  by  him,  or  that  application 
for  registration  has  been  made  in  the  foreign  country  in  which  he 
resides.  In  such  case  it  is  not  necessary  to  state  that  the  mark  has 
been  used  in  commerce  in  the  United  States  or  among  the  states. 
The  verification  required  in  the  section  must  be  made  before  the 
officers  designated  in  the  Act. 

§  227.  Designation  of  Agent  by  Non-Residents. 

Sec.  3.  That  every  applicant  for  registration  of  a  trade- 
mark, or  for  renewal  of  registration  of  a  trade-mark,  who  is 
not  domiciled  within  the  United  States,  shall,  before  the 
issuance  of  the  certificate  of  registration,  as  hereinafter  pro- 
vided for,  designate,  by  a  notice  in  writing,  filed  in  the  Patent 
Office,  some  person  residing  within  the  United  States  on 
whom  process  or  notice  of  proceedings  affecting  the  right  of 
ownership  of  the  trade-mark  of  which  such  applicant  may 
claim  to  be  the  owner,  brought  under  the  provisions  of  this 
act  or  under  other  laws  of  the  United  States,  may  be  served, 
with  the  same  force  and  effect  as  if  served  upon  the  applicant 
or  registrant  in  person.  For  the  purposes  of  this  act  it  shall 
be  deemed  sufficient  to  serve  such  notice  upon  such  appli- 
cant, registrant,  or  representative  by  leaving  a  copy  of  such 
process  or  notice  addressed  to  him  at  the  last  address  of 
which  the  Commissioner  of  Patents  has  been  notified." 
§  228.  Foreign  Applicants. 

"  Sec.  4.  That  an  application  for  registration  of  a  trade- 
mark filed  in  this  country  by  any  person  who  has  previously 
regularly  filed  in  any  foreign  country  which,  by  treaty,  con- 
vention, or  law,  affords  similar  privileges  to  citizens  of  the 
United  States  an  application  for  registration  of  the  same 
trade-mark  shall  be  accorded  the  same  force  and  effect  as 

eign  countries.  So  that  registration  Co.,  40  App.  D.  C.  480.  Hump  Hair- 
comes  only  after  acquirement  of  the  piti  Co.  v.  De  Long  Hook  &  Eye  Co., 
right  to  a  trade-mark  by  use.  The  39  App.  D.  C.  484;  Johnson  v.  Whelan, 
complainant  shows  user  prior  to  regis-  33  App.  D.  C.  4. 
tration.  If  that  be  publication,  com-  ^^  Breilenbach  v.  Rosenberg,  37  App. 
plainant  did  only  what  the  statute  D.  C.  102. 
required  of   it."    Re   Excelsior   Shoe 


432  Registered  Trade-Marks 

would  be  accorded  to  the  same  application  if  filed  in  this 
country  on  the  date  on  which  application  for  registration  of 
the  same  trade-mark  was  first  filed  in  such  foreign  country: 
Provided,   That  such  application   is  filed   in   this   country 
within  four  months  from  the  date  on  which  the  application 
was  first  filed  in  such  foreign  country:  And  provided,  That 
certificate  of  registration  shall  not  be  issued  for  any  mark 
for  registration  of  which  application  has  been  filed  Ijy  an 
applicant  located  in  a  foreign  country  until  such  mark  has 
been  actually  registered  by  the  applicant  in  the  country  in 
which  he  is  located." 
The  fourth  section  of  the  Act  gives  the  same  force  to  applica- 
tions for  registrations  of  trade-marks  previously  filed  in  foreign 
countries   which   extend   similar   privileges   to   citizens    of   the 
United  States,  as  would  be  accorded  if  the  application  were  made 
in  this  country  on  the  date  of  the  foreign  application.    In  order 
to  enjoy  this  privilege  the  application  must  be  filed  within  four 
months  from  the  date  of  the  foreign  application.    Failure  to  make 
the  application  within  the  statutory  period,  however,  does  not 
deprive  a  foreign  applicant  of  any  rights.     He  merely  loses  the 
benefit  of  having  his  application  considered  as  of  the  date  of  the 
foreign  application.^"     The  section  further  provides  that  in  such 
case,  registration  will  not  be  granted  prior  to  actual  registration  in 
the  foreign  country. 
§  229.  Unregistrable  Trade-Marks. 

"  Sec.  5.  That  no  mark  by  which  the  goods  of  the  owner  of 
the  mark  may  be  distinguished  from  other  goods  of  the  same 
class  shall  be  refused  registration  as  a  trade-mark  on  account 
of  the  nature  of  such  mark  unless  such  mark — 

"  (a)  Consists  of  or  comprises  immoral  or  scandalous 
matter. 

"  (6)  Consists  of  or  comprises  the  flag  or  coat  of  arms  or 
other  insignia  of  the  United  States  or  any  simulation  thereof, 
or  of  any  State  or  municipality  or  of  any  foreign  nation,  or  of 
any  design  or  picture  that  has  been  or  may  hereafter  be 
adopted  by  any  fraternal  society  as  its  emblem,  or  of  any 
name,  distinguishing  mark,  character,  emblem,  colors,  flag,  or 
banner  adopted  by  any  institution,  organization,  club,  or  so- 
ciety which  was  incorporated  in  any  State  in  the  United  States 
^^  Deitsch  Bros.  v.  Loonen,  39  App.  D.  C.  11. 


Unregistrable  Trade-Marks  433 

'prior  to  the  date  of  the  adoption  and  use  by  the  applicant:  Pro- 
vided, That  said  name,  distinguishing  mark, 
jan.Vmt''^  ^"^ ''''  "'  character,  emblem,  colors,  flag,  or  banner 
was  adopted  and  publicly  used  by  said  insti- 
tution, organization,  club,  or  society  prior  to  the  date  of  adoption 
and  use  by  the  applicant:  Provided,  That  trade-marks  which 
are  identical  with  a  registered  or  known  trade-mark  owned 
and  in  use  by  another  and  appropriated  to  merchandise  of 
the  same  descriptive  properties,  or  which  so  nearly  resemble 
a  registered  or  known  trade-mark  owned  and  in  use  by  an- 
other and  appropriated  to  merchandise  of  the  same  descrip- 
tive properties  as  to  be  likely  to  cause  confusion  or  mistake 
in  the  mind  of  the  public  or  to  deceive  purchasers  shall  not 
be  registered :  Provided,  That  no  mark  which  consists  merely 
in  the  name  of  an  individual,  firm,  corporation,  or  associa- 
tion not  written,  printed,  impressed,  or  woven  in  some  par- 
ticular or  distinctive  manner,  or  in  association  with  a  por- 
trait of  the  individual,  or  merely  in  words  or  devices  which 
are  descriptive  of  the  goods  with  which  they  are  used,  or  of 
the  character  or  quality  of  such  goods,  or  merely  a  geograph- 
ical name  or  term,  shall  be  registered  under  the  terms  of 
this  Act :  Provided  further.  That  no  portrait  of  a  living  indi- 
vidual may  be  registered  as  a  trade-mark  except  by  the 
consent  of  such  individual,  evidenced  by  an  instrument  in 
writing:  And  provided  further.  That  nothing  herein  shall  pre- 
vent the  registration  of  any  mark  used  by  the  applicant  or 
his  predecessors,  or  by  those  from  whom  title  to  the  mark  is 
derived,  in  commerce  with  foreign  nations  or  among  the 
several  States  or  with  Indian  tribes  which  was  in  actual  and 
exclusive  use  as  a  trade-mark  of  the  applicant,  or  his  pred- 
ecessors from  whom  he  derived  title,  for  ten  years  next  pre- 
ceding February  twentieth,  nineteen  hundred  and  five: 
Provided  further.  That  nothing  herein  shall  prevent  the  regis- 
tration of  a  trade-mark  otherwise  registrable  because  of  its 
being  the  name  of  the  applicant  or  a  portion  thereof." 
Instead  of  specifying,  as  does  the  British  Act,  what  kinds  of 
words  or  marks  may  be  registered,  the  fifth  section  of  the 
United  States  Act  enumerates  the  kinds  of  marks  which  from 
their  nature,  are  not  registrable.  It  contains  a  "fairly  complete 
list  of  those  marks  which  manufacturers  and  dealers  use  in  con- 


434  Registered  Thadk-Marks 

nection  with  the  sale  of  their  goods  and  which  the  courts  have 
held  not  to  constitute  technical  trade-marks."  "  Those  specified 
are: 

1.  Immoral  and  Scandalous  Matter.  Subdivision  A  of  this 
section  denies  registration  to  any  mark  which  is  immoral  or  scan- 
dalous in  its  nature.  Public  policy  demands  such  restriction. 
Moreover,  marks  of  this  character  used  in  compliance  with  the 
provisions  of  the  ten-year  clause  will  not  be  entitled  to  registra- 
tion.'^ 

2.  Flags  and  Other  Public  Insignia.  Subdivision  B  for  like 
reason  refuses'  registration  to  marks  which  simulate  public  in- 
signia. Nor  does  this  class  of  marks  come  within  the  scope  of  the 
ten-year  clause.'^  The  language  of  the  clause  is  such  that  it  is  im- 
possible for  the  owner  of  such  mark  to  comply  with  its  terms.^° 
Under  this  subdivision  registration  was  refused  to  the  following 
marks:  A  mark  simulating  a  coat  of  amis  of  the  state  of  Mary- 
land; -*  a  mark  simulating  the  great  seal  of  the  United  States;  ^^ 
a  mark  simulating  the  great  seal  of  the  department  of  justice  of 
the  United  States;  ^^  a  mark  consisting  of  an  EngUsh  hall-mark;  ^* 
a  mark  containing  a  representation  of  the  Italian  flag.^^ 

3.  Marks  Resembling  Another's  Trade-Mark,  etc.  The  first  pro- 
viso of  the  section  includes  all  marks  which  are  identical  or  similar 
to  known  or  registered  trade-marks  used  by  another  on  a  similar 
class  of  merchandise.  They  are  forbidden  registration.  The 
purpose  of  the  Act  being  t-o  protect  trade-marks  from  infringe- 
ment, it  could  not  fulfill  its  purpose  and  allow  registration  to 
similar  marks. 

"  Thaddeus  Davids  Co.  v.  Davids,  simulation  of  the  Maryland  coat  of 

178  Fed.  801.  arms,  and  for  this  reason  the  appel- 

'*/w  re  Calm,  Belt  (Ss  Co.,  27  App.  lants'  trade-mark  sought  to  be  rcgis- 

D.  C.   173;   Thaddeus  Davids  Co.  v.  tered  does  not  come  within  the  last 

Davids,  233  U.  S.  461.  proviso  of  the  5th  section."     In  re 

19  Thaddeus  Davids  Co.  v.  Davids,  Cahn,  Belt  &  Co.,  27  App.  D.  C.  173. 
233  U.  S.  461.  21  In  re  Cahn,  Belt  &  Co.,  27  App. 

20  "The  coat  of  arms  of  Maryland  D.  C.  173. 

was  never  in  the  exclusive  use  of  the  "  In  re  American  Glue  Co.,  27  App. 

applicants  during  any  period,  nor  could  D.  C.  391. 

the  applicants  ever  acquire  an  exclu-  ^*  Re  Connors  Paint  Co.,  27  App. 

sive  use  as  a  trade-mark  of  the  State  D.  C.  389. 

coat  of  arms.    In  the  sense  of  this  pro-  "  In  re  Gorham  Mfg.  Co.,  41  App. 

viso,  the  applicants  had  the  actual,  D.  C.  263. 

but  never  had  the  exclusive,  use  of  this  -'  De  Nobili  v.  Scanda,  198  Fed.  341. 


Unregistrable  Trade-Marks  435 

(a)  Deceptively  Similar.  For  instance,  the  following  marks  have 
been  held  similar  or  identical  within  the  meaning  of  this  proviso : 

''Worth"  and  "Our  Worth."  ^e 

''Hoff"  and  ''Leopold  Hoff's."  ^7 

"Green  Ribbon"  and  "Green  River."  ^s 

"Chologestin"  and  "Chologen."  ^s 

"Creo-Carbolin"  and  "Carbolineum."  ^o 

"Amber  Bead"  and  "Amber."  ^^ 

"Col.  Willet,"  with  representation  of  Colonial  Officer;  and  por- 
trait of  Gen.  Anthony  Wayne. ^- 

"Autola"  and  "Au-to-do."  ^^ 

Indian  head  in  profile  and  a  front  view  of  Indian  head.^^ 

"Hydronon"  and  "Hydrocide."  ^^ 

"Chancellor's  Club"  and  "Club."  '' 

"Old  Tucker"  and  "J.  C.  Tucker."  " 

Representation  of  a  peacock  at  top,  with  words  "Gold  Top" 
(beer);  and  representation  of  a  peacock  with  words  "Ye  Peacock 
Ale."  3s 

Representation  of  a  vineyard,  herd  of  camels  and  two  men 
bearing  a  grape;  and  representation  of  two  men  similarly  dressed 
bearing  a  bunch  of  grapes. ^^ 

On  the  other  hand,  the  following  marks  were  held  not  to  be 
similar : 

Picture  of  a  crow  with  the  words  "Old  Crow"  and  picture  of 
three  birds  of  smaller  size  in  the  dead  branches  of  a  tree  with  the 
words  "Raven  Valley."  ^^ 

26  In  re  Nash  Hardware  Co.,  33  App.  *'  In  re  Wilcox  &  Co.,  36  App.  D.  C. 

D.  C.  221.  107. 

2'  In    re    Hoff,    33    App.    D.    C.  ^^  In  re  Indian  Portland  Cement  Co., 

233.  30  App.  D.  C.  463. 

28  Lang  v.  Green  River  Distilling  Co.,  ^s  ^g  Barrett  Mfg.  Co.,  41  App. 
33  App.  D.  C.  506.  D.  C.  513. 

29  Breitcnbach  v.  Rosenberg,  37  App,  ^«  In  re  Herbst  Importing  Co.,  30 
D.  C.  102.  App.  D.  C.  297. 

3"  In  re  Barrett  Mfg.  Co.,  37  App.  "  Brown-Forman  Co.  v.  Beech  Hill 

D.  C.  111.  Co.,  30  App.  D.  C.  485. 

31  In  re  Independent  Breweries  Co.,  ^^  In  re  Reisch  Brewing  Co.,  39  App. 

39  App.  D.  C.  118.  D.  C.  445. 

'2  Wayne  County  Preserving  Co.  v.  '^  Carmcl    Wine    Co.    v.    California 

Burt  Olney  Canning  Co.,  32  App.  D.  C.  Winery,  38  App.  D.  C.  1. 

279.  ■»«  Gaines  v.  Knecht,  27  App.  D.  C. 

530. 


436  Registered  Trade-Marks 

Picture  of  a  crow  with  the  words  ''Old  Crow"  and  picture  of  a 
blue-jay  perched  in  the  branches  of  a  tree  with  the  words  "Old 
J."  '' 

"Sozodont"  and  "Kalodont."  '^ 

Outline  of  a  six-pointed  star  and  a  comet  consisting  of  a  solid 
five-pointed  star  with  a  tail.^' 

''Victor"  and  "Victoria."  ^^ 

"Sozodont"  and  "Zodenta."  '^ 

"Pinozyme"  and  " Peptenzyme."  ^^ 

"Grand-Ma's"  and  "Mother's."  « 

"Havoline"  and  "Valvoline."  ^ 

"Henderson"  and  "Anderson."  ^^ 

"Mammoth"  with  picture  of  prehistoric  animal;  and  represen- 
tation of  two  elephants.^" 

(b)  The  Goods  of  Same  Descriptive  Property.  The  fact  that  in 
registering  a  trade-mark  for  certain  articles  they  are  included  in 
one  of  the  comprehensive  classes  established  by  the  Commis- 
sioner of  Patents  pursuant  to  Sec.  2  of  the  Act  of  May  4,  1906, 
amending  the  laws  relating  to  the  registration  of  trade-marks, 
does  not,  of  itself  make  them  of  the  same  descriptive  properties 
as  other  articles  included  in  the  same  class.  ^"^  As  to  what  are 
goods  of  the  same  "descriptive  properties"  it  has  been  held  that 
the  following  are  not  of  the  same  class: 

Salted,  smoked  and  canned  fish  and  crackers  and  breakfast 
cereals.''^ 

Peroxide  of  hydrogen  and  soft  drinks.  ^^ 

Hairpins  and  hooks  and  eyes. 


53 


*^  Gaines  v.  Carlton  Imp.  Co.,  27  *'^  Valvoline  Co.  v.  Havoline  Co.,  211 

App.  D.  C.  571.  Fed.  189. 

*^  Landespriv  v.  Hall  &  Ruckel,  36  *^  Buchanan-Anderson  Co.  v.  Breen, 

App.  D.  C.  532.  27  App.  D.  C.  573. 

"  Hutchinson,    Pierce     &     Co.     v.  *"  Summit  City  Soap  Works  v.  Stand- 

Loewy,  163  Fed.  42.  ard  Soap  Co.,  37  App.  D.  C.  604. 

**  McLean  Co.  v.  Adams  Mfg.  Co.,  ^'^  Hump  Hairpin  Co.    v.  DeLong 

31  App.  D.  C.  509.  Hook  &  Eye  Co.,  39  App.  D.  C.  484. 

*^  Hall  V.  Ingram,  28  App.  D.  C.  ^^  Johnson  Co.  v.  Smith  &  Co.,  37 

454.  App.  D.  C.  107. 

"  Waterhury  Chemical  Co.  v.  Reed,  ^^  Consumers  Co.  v.  Hydrox  Chem- 

41  App.  D.  C.  256.  ical  Co.,  40  App.  D.  C.  284. 

"  Bromund  Co.   v.   Columbia   Wax  ^'  Hump    Hairpin    Co.    v.    DeLong 

Co.,  41  App.  D.  C.  506.  Hook  &  Eye  Co.,  39  App.  D.  C.  484. 


Unregistrable  Trade-Marks  437 

Automobiles  and  rubber  tires. ^^ 

Kalsomine  and  white  lead.^^ 

Chewing  gum  and  candy. '^^ 

Soap,  scouring  powder,  washing  compounds,  window  and  metal 
cleaners;  soap  and  perfumeries.''^ 

Pickles;  canned  fruits  and  vegetables.''^ 

On  the  other  hand,  the  following  goods  have  been  held  to  be  of 
a  similar  class: 

Coffee  and  chocolate. ^^ 

Beverage  composed  in  part  from  malt  and  containing  less  than 
one-half  of  one  per  cent  alcohol  and  beer.^*' 

Canned  sardines  and  canned  fish." 

Paint  colors  and  paste  paints  and  paints,  stains,  etc.^^ 

Coal  and  wood  stoves  and  gas  and  gasoline  stoves.^^ 

Ground  roots  and  bark  prepared  to  mix  with  Holland  gin  to 
make  bitters  and  a  finished  preparation  of  the  same  ingredients.*'^ 

Electric  lamps  and  incandescent  mantles.^ ^ 

(c)  Words  Likely  to  Deceive  Purchasers.  The  following  marks 
were  refused  registration  on  the  ground  that  they  were  deceptive : 
*'Boy  Scouts"  applied  to  shoes  in  no  way  connected  with  that 
organization.^^  ''Half  Spanish"  applied  to  cigars  which  did  not 
contain  one-half  Spanish  tobacco.^^  ''Taylor"  in  connection  with 
a  whisky  purporting  to  be  pure,  when  in  fact  it  was  adulterated.^* 
"Brookwood"  in  connection  with  a  whisky  purporting  to  be  pure, 
when  in  fact  it  was  adulterated.^^ 

4.  Marks  Consisting  of  Names  Only.     Where  the  trade-mark 

5«  G.  &  J.  Tire  Co.  v.  G.  J.  G.  Motor  ^^  Phoenix  Paint  &   Varnish  Co.  v. 

Car  Co.,  39  App.  D.  C.  508.  Lewis  &  Bros.,  32  App.  D.  C.  285. 

"  Muralo  Co.  v.  National  Lead  Co.,  «'  American    Stove    Co.    v.    Detroit 

36  App.  D.  C.  541.  Stove  Works,  31  App.  D.  C.  304. 

*«  Dunstan  Co.  v.  Autosale  Gum  &  «^  Schuster  Co.  v.  Muller,  28  App. 

Chocolate  Co.,  113  Ms.  Dec.  265.  D.  C.  409. 

"  Sexton  &  Co.  v.  Arnold  &  Co.,  "  General    Electric    Co.    v.    Anglo- 

113  Ms.  Dec.  242.  American  Incandescent  Light  Co.,  114 

^8  Sexton  &  Co.  v.  Alart  &  McGuire  Mo.  Dec.  8. 

Co.,  114  Ms.  Dec.  320.  ^^  Re  Excelsior  Shoe  Co.,  40  App. 

59  Walter  Baker  Co.  v.  Harrison,  32  D.  C.  480. 

App.  D.  C.  272.  "  Kildoio  Cigar  Co.  v.  Sprague  Cigar 

«"  In  re  Independent  Breweries  Co.,  Co.,  35  App.  D.  C.  345. 

39  App.  D.  C.  118.  ^8  Levy  v.  Uri,  31  App.  D.  C.  441. 

«i/n  re  John  Braadland,  Ltd.,   37  «' /w    re    Wright,    33   App.    D.   C. 

App.  D.  C.  602.  510. 


438  Registered  Trade-Marks 

consists  merely  of  a  name  of  a  person  or  firm  without  any  dis- 
tinguishing feature  it  is  not  registrable  under  the  act.^°  Under 
certain  conditions,  however,  such  a  mark  may  be  registered. 

(a)  Distinctive  Script.  If  a  mark  is  written  or  printed  in  a  dis- 
tinctive style,  it  may  be  registered.  "It  is  believed  that  the  con- 
trolling principle  underlying  the  requirement  of  the  statute  that 
a  mere  name  unless  written  or  printed  in  a  descriptive  manner 
may  not  be  registered,  is  that  the  distinctive  manner  in  which 
the  name  is  displayed  must  be  of  a  character  as  to  give  such  a 
distinctive  impression  to  the  eye  of  the  ordinary  observer  as  to 
outweigh  the  significance  of  the  mere  name."  Ex  parte  Polar 
Knitting  MillsJ^  In  the  case  in  the  foot-note  it  was  held 
that  the  mark  was  not  written  in  such  distinctive  manner  as  to 
entitle  the  complainant  to  registration.^ ^'^ 

(b)  In  Connection  with  a  Portrait.  If  a  mark  consisting  of  a 
name  is  accompanied  by  a  portrait  it  may  be  registered. 

(c)  Name  of  Applicant.  By  amendment  in  1911  a  mark  con- 
sisting of  a  name,  where  such  mark  was  the  name  of  the  applicant, 
became  registrable.  Such  a  name  may  become  registrable  if  the 
owner  of  the  mark  has  used  such  mark  in  accordance  to  the  re- 
quirements set  forth  in  the  ten-year  clause  .'^^ 

5.  Descriptive  Words  and  Devices.  The  provision  which  forbids 
the  registration  of  marks  which  are  descriptive  of  the  goods  to 
which  they  are  applied  is  merely  a  declaration  of  an  accepted 
principle  of  the  common  law.'^^  The  Patent  Office  is  not  justified 
in  presuming  that  a  trade-mark  applied  to  a  patented  article  has 
become  generic,  or  descriptive,  in  an  effort  to  prevent  a  monopoly 
from  continuing  beyond  the  life  of  the  patent.^^"  The  courts 
have  held  the  following  marks  to  be  descriptive  in  character  and 
therefore  not  entitled  to  registration: 

"Boy  Scouts"  (shoes).^'' 

'"'Kentucky  Distilleries  Co.  v.  Old  D.  C.  125.     Ex  parte  Alden,  131  O. 

Lexington  Club  Distilling  Co.,  31  App.  G.  2419. 

D.  C.  223.    In  re  Success  Co.,  34  App.  "  Thaddeus  Davids  Co.  v.  Davids, 

D.  C.  443;  Oliver  Plow  Wks.  v.  Oliver  233  U.  S.  461. 

Mfg.  Co.,  40  App.  D.  C.  125;  In  re  ''' In  re  National  Phonograph  Co.,  29 

Artesian  Mfg.  Co.,  37  App.  D.  C.  113.  App.  D.  C.  142. 

"  154  Off.  Gaz.  251.  ""  Udell-Predock  Mfg.  Co.  v.  Udell 

""  In  re  Artesian  Mfg.  Co.,  37  App.  Works,  32  App.  D.  C.  282. 

D.  C.  113.    Oliver  v.  Oliver,  40  App.  ^'^  In  re  Excelsior  Shoe  Co.,  40  App. 

D.  C.  480. 


Unregistrable  Trade-Marks  43d 

^'Brilliant"  (flour)7^ 

"Inter-phone"  (telephone  switching  apparatus)^^ 

''Evergreen"  (canned  fruits  and  vegetables).'''^ 

"No-sag"  (hand  bags) 7^ 

"Black  Caps"  (medicine). ^^ 

' '  Getwell ' '  (medicines)  .^'' 

"Kantleek"  (atomizers,  etc.).^^ 

"Black  Capsules"  (medicines) .^^ 

"Asbestos"  (shoes) .^^ 

A  mark  consisting  of  a  figure  representkig  a  ball  bearing.^^ 

"Next-to-Beer"  (drink). ^^ 
"Mountain  Dew"  (whisky) .^6 

"Crystal"  (beer).^' 

A  mark  consisting  of  a  representation  of  a  loving  cup  with  the 
word  "Trophy."  «« 

"Standard"  (phonographs).^^ 

' '  Oriental  Cream ' '  (face  lotion)  .^o 

A  mark  representing  the  rim  of  a  wheel  with  a  tire.^^ 

"Circular  Loom."  92 

' '  Self-loading ' '  (cartridges)  .^ ^ 

On  the  other  hand,  the  following  terms  were  held  registrable: 

"Cream"  (baking  powder) .^^ 

''^  Sauers  Milling  Co.  y.  Kehlor  Flour  ^^  In  re  Central  Consumers  Co.,  32 

Mills  Co.,  39  App.  D.  C.  535.  App.  D.  C.  523. 

^8  In  re  Western  Electric  Co.,  39  App.  *«  Dennehy  &  Co.  v.  Robertson  Co., 

D.  C.  420.  32  App.  D.  C.  354. 

"  (Sears  &  Nichols  Co.  v,  Brakeley,  38  ^^  In  re  South  Brewery  Co.,  32  App. 

App.  D.  C.  530.  D.  C.  591. 

^*  In  re  Freund  Bros.  &  Co.,  35  App.  *^  hi  re  Meyer  Bros.  Coffee  &  Spice 

D.  C.  353.  Co.,  35  App.  D.  C.  351. 

^3  hi  re  Safety  Remedy  Co.,  35  App.  «'  In  re  National  Phonograph  Co.,  29 

D.  C.  353.  App.  D.  C.  142. 

»"  In  re  Anti-Cori-Zine  Chemical  Co.,  ^°  In  re  Hopkins,  29  App.  D.  C.  118. 

34  App.  D.  C.  191.  91  In  re  Motz  Tire  Co.,  40  App.  D.  C. 

^1  In  re  Seamless  Rubber  Co.,  34  App.  487. 

D.  C.  357.  *-  In  re  American  Circidar  Loom  Co., 

»2  Planten  v.  Pharmacy  Co.,  33  App.  28  App.  D.  C.  450. 

D.  C.  268.  "'  Wincliester  Repeating  Arm^  Co.  v. 

83  Johnson  v.  Brandau,  32  App.  D.  C.  Peters  Cartridge  Co.,  30  App.  D.  C.  505. 

348.  9'»  International  Food   Co.   v.   Priee 

8'*  In  re  Schweinfurter,  38  App.  D.  C.  Baking   Poivder   Co.,  37  App.  D.  C. 

279.  137. 


440 


Registered  Trade-Marks 


"Navy"  (candy).«"> 

6.  Geographical  Terms.  Marks  consisting  of  geographical  terms 
are  not  registrable  under  the  Act.  These  terms  include  not  only 
names  indicating  cities,  countries,  or  subdivisions  of  countries,  but 
also  to  names  which  apply  to  a  particular  section  of  the  globe. ^^ 
The  provision  is  declaratory  of  the  well-settled  common-law  rule."^ 
If,  however,  a  geogra})liical  term  has  been  used  as  a  trade-mark  in 
such  manner  as  to  fulfill  the  requirement  of  the  ten-year  clause  it 
may  be  registered.^^  The  following  terms  have  been  denied  regis- 
tration : 

"Nubia"  (cigarettes) .99 

"Orient"  (typewriter  ribbon).^ 
"British  America"  (tobacco).^ 
"Orange  Grove."  ^ 
"Oriental."  ' 

On  the  other  hand,  the  following  marks  are  registered : 
"Chartreuse"  (cordial).^ 

The  United  States  Supreme  Court  has  recently  held  that  the 
name  "The  American  Girl"  for  shoes  is  neither  geographical  or 


^^  Inre  National  Candy  Co.,  35  App. 
D.  C.  351. 

^^  In  re  Crescent  Typewriter  Co.,  30 
App.  D.  C.  324.  The  court  denied 
registration  to  the  mark  "Orient"  as 
appHed  to  typewriter  ribbons  on  the 
ground  that  it  was  a  geographical 
ter m .  Van  Orsdel ,  J . ,  said :  "  We  thi  nk 
this  provision  of  the  statute  is  broad 
enough  to  prohibit  the  use  of  any  word 
that  has  an  exclusive  geographical  sig- 
nificance or  that  would  suggest  any 
particular  geographical  location.  Cer- 
tainly, the  use  of  a  name  indicating  a 
particular  place  is  prohibited,  such  as 
the  name  of  a  city,  or  country,  or  sub- 
division of  a  country.  With  equal 
certainty  do  we  think  that  it  prohibits 
the  use  of  a  name  that  appHes  to  a 
particular  section  of  the  globe,  as,  in 
this  instance,  to  a  section  composed 
of  a  number  of  countries.  The  word 
'Orient'  is  generally  understood  to 
refer    to    certain    eastern    countries^ 


specifically  the  region  east  and  south- 
east of  the  leading  states  of  Europe, 
including,  among  others,  Turkey, 
Persia,  Egypt,  and  India.  The  word 
has  a  fixed  and  definite  use  in  our 
vocabulary." 

3'  Mcllhenney  v.  New  Iberia  Co.,  34 
App.  D.  C.  430. 

38  Thaddeus  Davids  v.  Davids,  233 
U.  S.  461;  Kayser  &  Co.  v.  Italian 
Silk  Underwear  Co.,  160  App.  Div.  607. 

93  Apollo  Bros.  V.  Perkins,  207  Fed. 
530. 

*  In  re  Crescent  Typewriter  Co.,  30 
App.  D.  C.  324. 

2  British-American  Tobacco  Co.  v. 
British-American  Cigar  Stores,  200  Fed. 
189. 

^H.  Becker  Co.  v.  C.  A.  Gambrill 
Mfg.  Co.,  38  App.  D.  C.  535. 

■•  In   re    Hopkins,  29    App.   D.  C. 

118; 

'  Baglin  v.  Cusenier  Co.,  221  U.  S. 
580. 


Unregistrable  Trade-Marks  441 

descriptive.^"  The  court  said  of  the  name,  "It  is  a  fanciful  desig- 
nation arbitrarily  selected."  The  court  noted  that  if  the  name 
had  been  "American  Shoe  "  its  ruling  might  have  been  different. 
See  also  "American  Express  Sealing  Wax  "  case.^'' 

For  cases  as  to  the  use  of  geographical  names  as  common-law 
trade-marks  see  chapters  on  "  Geographical  Names  "  and  "What 
May  be  Appropriated  as  a  Trade-Mark." 

7.  Portraits.  The  portrait  of  a  living  individual  will  not  be 
registered  as  a  trade-mark  unless  the  application  is  accompanied 
by  the  written  consent  of  the  person  portrayed  to  use  the  portrait 
as  a  trade-mark. 

8.  The  Ten-Year  Clause.  The  fourth  proviso,  commonly  called 
the  ten-year  clause,  was  enacted  in  these  words: 

And  Provided  further,  That  nothing  herein  shall  prevent 
the  registration  of  any  mark  used  by  the  applicant  or  his  pred- 
ecessors, or  by  those  from  whom  title  to  the  mark  is  de- 
rived, in  commerce  with  foreign  nations  or  among  the  several 
States,  or  with  Indian  tribes,  which  was  in  actual  and  ex- 
clusive use  as  a  trade-mark  of  the  applicant  or  his  predeces- 
sors from  whom  he  derived  title  for  ten  years  next  preceding 
the  passage  of  this  Act." 
A  brief  review  of  the  history  of  the  bill  in  Congress  is  essential 

to  a  clear  understanding  of  this  statute.    As  originally  presented 

for  the  consideration  of  Congress,  the  text  of  the  proviso  was  as 

follows : 

"x4.nd  provided  further,  that  nothing  herein  shall  prevent 
the  registration  of  any  trade-mark  used  by  the  applicant  or 
his  predecessors,  or  by  those  from  whom  title  to  the  trade- 
mark is  derived,  in  commerce  with  foreign  nations  or  among 
the  several  States  or  with  Indian  tribes  which  was  in  actual 
and  lawful  use  as  a  trade-mark  of  the  applicant,  or  his 
predecessors  from  whom  he  derived  title  over  ten  years 
next  preceding  February  twentieth,  nineteen  hundred  and 
five." 
In  the  course  of  its  enactment  by  the  legislature,  its  wording 

was  changed  and  manifestly  this  charge  of  language  was  made 

with  a  definite  purpose.    It  was  thought  that  the  word  "trade- 
s'' Hamilton     Brown    Shoe    Co.     v.  ^^  Dennison  v.  Thomas  Co.,  91  Fed. 

Wolf  Bros.  &  Co.,  240  U.  S.  251;  36      651-3. 

Sup.  Ct.  Rep.  269. 


442  Registered  Trade-Marks 

mark"  as  used  was  too  limited  in  meaning  to  fulfill  the  purpose 
of  the  Act,  and  the  broader  word  "mark"  was  substituted.  Like- 
wise the  term  "and  lawful"  was  omitted  and  the  phrase  "and 
exclusive"  inserted  in  its  place.  The  natural  inference  from  these 
changes  is  that  Congress  intended  to  permit  registration  of  marks 
which  were  not  valid  common-law  trade-marks." 

Judge  Noyes  writes,  referring  to  this  clause:  "It  provides  that 
nothing  shall  prevent  the  registration  of  any  'mark'  used  as  a 
'trade-mark'  for  more  than  10  years.  The  evident  purpose  is  to 
permit  the  registration  of  marks  not  amounting  to  technical  trade- 
marks but  which  have  been  long  used  as  such.  This  is  indicated 
not  only  by  the  language  of  the  clause  itself,  but  by  the  history  of 
the  passage  of  the  Act  through  Congress."  ^ 

Bradford,  D.  J.,  similarly  writes:  "Section  5  *  *  *  when 
read  in  connection  with  other  provisions,  evidently  contemplated 
that  some  marks  *  *  *  other  than  proper  or  technical  trade- 
marks might  be  registered."  ^ 

"Congress  evidently  had  in  mind  the  fact  that  marks,  although 
not  susceptible  of  exclusive  appropriation  at  common  law,  fre- 
quently acquired  a  special  significance  in  connection  with  par- 
ticular commodities;  and  the  language  of  the  fourth  proviso  was 
carefully  chosen  in  order  to  bring  within  the  statute  those  marks 
which,  while  not  being  technical  trade-marks,  had  been  in  *  actual 
and  exclusive  use '  as  trade-marks  for  ten  years  next  preceding  the 
passage  of  the  Act."  ^ 

We  now  proceed  to  a  consideration  of  this  "  Ten  Year  Law" 
as  this  clause  is  commonly  known,  in  connection  with  the  other 
provisions  of  the  section. 

Subdivisions  a  and  b,  viz.  refuse  registration  of  certain 
marks.    These  marks  are  of  such  a  character  that  it  is  apparent 

'' Davids  Co.  V.  Davids,  l78Fed.  801;  mark   here   in   question,   although   a 

Dyer  Quarry  Co.  v.  Schuylkill  Stone  Co.,  geographical  term,  for  more  than  ten 

185  Fed.  557;  Davids  Co.  v.  Davids,  years  prior  to  its  appHcation  for  regis- 

233  U.  S.  461.    In  Kayser  v.  Italian  tration,  it  was  properly  admitted  to 

Silk   Underwear  Co.,   160  App.   Div.  such  registration  and  the  certificate 

607,  the  court  enjoined  the  defendant  therefor  having  been  duly  issued  it  is 

from  using  the   plaintiff's  registered  entitled  to  protection." 
trade-mark   "Italian"   in   connection  '  7)aw(^s  Co.  v.  DanVZs,  178  Fed.  801. 

with  silk  underwear.    Clarke,  J.:  "It  ^  Dyer  Quarry  Co.  \.  Schuylkill  Stone 

appearing  that  the  plaintiff  and  its  Co.,  185  Fed.  557. 
predecessor  had  exclusively  used  the  ^Davids  v.  Davids,  233  U.  S.  461. 


Unregistrable  Trade-Marks  443 

that  the  reason  for  refusing  them  registration  is  that  of  pubhc 
poHcy.  Manifestly  Congress  did  not  intend  that  a  mark  con- 
sidered objectionable  on  such  grounds,  could  merely  by  long  use 
be  sanctioned  and  protected  by  the  State.  ^^ 

Moreover,  the  very  language  of  the  ten-year  clause  makes  it 
difficult  to  understand  how  a  mark  imitating  or  reproducing 
some  public  insignia  could  be  exclusively  used.  To  quote  from 
the  opinion  in  In  re  Cahn  Belt  &  Co.,  27  App.  D.  C.  173:  "The 
coat  of  arms  of  Maryland  was  never  in  the  exclusive  use  of  the 
applicants  during  any  period;  nor  could  the  applicants  ever 
acquire  an  exclusive  use  as  a  trade-mark  of  the  state  coat  of 
arms.  In  the  sense  of  this  proviso  the  applicant  had  the  actual, 
but  never  the  exclusive,  use  of  this  simulation  of  the  Maryland 
coat  of  arms,  and  for  this  reason  the  appellant's  trade-mark 
sought  to  be  registered  does  not  come  within  the  last  proviso  of 
the  fifth  section.  ^^ 

Mr.  Justice  Hughes  construing  the  ten-year  clause  in  Thaddeus 
Davids  Co.  v.  Davids, ^^"^  wrote: 

*'We  think  that  the  intent  of  Congress  is  clear.  In  the  opening 
clause  of  Sec.  5,  it  is  provided  that  no  mark  by  which  the  goods 
of  the  owner  may  be  distinguished  from  other  goods  of  the  same 
class  shall  be  refused  registration  as  a  trade-mark,  on  account  of 
its  nature,  unless  it  consists  of,  or  comprises:  (a)  immoral  or  scan- 
dalous matter;  or  (b)  certain  public  insignia.  The  marks  within 
these  excepted  classes  are  withdrawn  from  the  purview  of  the  Act. 
Then,  in  dealing  with  the  marks  which  remain,  limitations  upon 
registrability  are  defined  by  the  first,  second  and  third  provisos; 
and  the  restrictions  thus  imposed  are  in  turn  qualified  by  the 
fourth  proviso  or  ten-year  clause.     It  follows  that  the  fourth 

"/w  re  Cahn  Belt  &  Co.,  27  App.  trade-mark    which    was    scandalous, 

D.  C.  173.    "The  5th  section,  taken  would  be  absurd.    The  proviso  which 

in  its  entirety    *    *    *    did  not  at  was  meant  to  be  a  saving  clause  for 

the  same  time  permit  marks  in  actual  certain  marks  cannot  be  construed  to 

and  exclusive  use  for  ten  years  to  be  make  the  marks  thus  saved  a  preferen- 

registered  as  trade-marks  if  such  marks  tial  class  of  marks  to  which  the  two 

were  either  scandalous,  or  immoral,  or  prohibitions    of   the   section   do   not 

simulations   of   public   insignia.     To  apply." 

permit,    under    this    proviso    to    the  "  /n  re  Cahn  Belt  &  Co.,  27  App. 

section,  the  registration  of  a  scandal-  D.  C.  173. 

ous  mark,  and  to  prohibit,  under  the  ""  233  U.  S.  461  at  p.  4G7. 
section,  the  registration  of  a  technical 


444  Registered  Trade-Marks 

proviso  in  no  way  detracts  from  the  force  of  the  exceptions  con- 
tained in  classes  (a)  and  (b)  which  were  plainly  intended  to  Ije 
established  without  qualification;  but  the  generality  of  the  suc- 
ceeding prohibitions  is  qualified.  It  may  well  be  that  this  qual- 
ification, by  reason  of  its  terms,  does  not  affect  the  first  proviso, 
which  relates  to  cases  of  conflicting  trade-marks,  as  the  ten-year 
clause  explicitly  requires  that  the  use  shall  have  been  'exclusive,' 
But  there  can  be  no  doubt  that  this  clause  does  modify  the  general 
limitations  contained  in  the  second  proviso  with  respect  to  the 
use  of  marks  consisting  of  names  of  persons,  firms  or  corporations, 
of  terms  descriptive  of  character  and  equality,  or  of  geographical 
names  or  terms.  Marks  of  this  sort,  notwithstanding  the  general 
prohibition,  were  made  registrable  when  the  applicant  or  his  pred- 
ecessors had  used  them,  actually  and  exclusively  as  trade-marks 
for  the  described  period." 

A  mark  registered  under  the  ten-year  clause  is  entitled  to  pro- 
tection from  infringement  just  as  is  any  other  trade-mark.  "It 
was  not  the  intention  of  Congress  thus  to  provide  for  a  barren 
notice  of  an  ineffectual  claim,  but  to  confer  definite  rights.  The 
applicant,  who  by  virtue  of  actual  and  exclusive  use  is  entitled 
to  register  his  mark  under  this  clause,  becomes  on  due  registration 
the  'owner'  of  a  'trade-mark'  within  the  meaning  of  the  act,  and 
he  is  entitled  to  be  protected  in  its  use  as  such."  ^- 

This  protection  is  not  restricted  to  use  of  a  mark  in  the  same 
form  in  which  it  is  registered.  Any  colorable  imitation  will  be 
considered  an  infringement.  Sandford,  D.  J.,  has  said  on  this 
point : 

"I  am  of  opinion  that  this  section  (§5)  when  properly  con- 
strued, does  not  confer  merely  the  right  to  the  use  of  the  registered 
mark  as  a  mark  in  the  precise  form  in  which  it  has  been  previously 
used,  but  that  by  registration  of  the  mark  under  section  5  of  the 
Act,  after  ten  years'  prior  exclusive  use,  such  mark  is  thereafter 
given  effect  as  a  valid  statutory  trade-mark  in  all  respects,  en- 
titling it  to  protection  as  any  other  statutory  trade-mark,  and  not 
merely  to  protection  as  a  mark  in  the  precise  form  of  its  former 
use."  '' 

^^  Davids  v.  Davids,  233  U.  S.  461  U.   S.  461;  Nashville    Syrup    Co.  v. 

at  p.  469.  Coca  Cola,  215  Fed.  527.    In  this  case 

"  Coca-Cola  v.  Nashville  Syrup  Co.,  Denison,  J.,  writes:  "The  specific  form 

200   Fed.   157;  Davids  v.  Davids,  233  in  which  the  mark  was  registered  in 


Unregistrable  Trade-Marks  445 

The  aim  of  the  ten-year  proviso  is  to  extend  to  marks  that 
could  not  be  registered  under  the  statute  that  existed  when  the 
ten-year  law  was  passed  (1905),  substantial  protection  against 
infringement. 

Its  purpose  is  practical,  to  relieve  business  men  whose  good  will 
is,  in  part  or  whole,  crystallized  about  names  that  are  not  suscep- 
tible of  registration  as  trade-marks,  a  right  to  obtain  the  benefits 
of  registration,  provided  the  names  they  use  have  been  in  actual 
and  exclusive  use  for  the  prescribed  period.  This  ten-year 
statute  represents  perhaps  the  greatest  step  so  far  taken  in 
America  for  the  adequate  protection  of  business  good-will,  and 
the  prevention  of  commercial  fraud  by  the  misuse  of  marks. 

Denison,  J.,  of  the  Circuit  Court  of  Appeals  has  described  the 
manner  in  which  a  personal  name  may  cease  to  be  used  in  trade 
as  a  personal  name,  and  become  a  trade-mark  susceptible  of  regis- 
tration under  this  Ten  Year  Law. 

"As  the  making  of  whisky  after  Crow's  death,  but  by  the  same 
formula  and  methods,  was  continued  by  Pepper  or  by  Gaines,  and 
as  it  continued  to  be  called  'Old  Crow,'  this  appellation  would 
gradually  change  its  character.  It  at  once  ceased  truly  to  per- 
sonify the  maker;  it  did  not  immediately  become  merely  arbi- 
trary. As  the  trade  lost  the  sense  of  Crow's  personality,  as  he 
became  less  real  and  more  traditional,  as  no  one  else  of  the  same 
name  challenged  the  growing  right,  and  as  with  Crow's  person- 
ality fading  there  must  also  fade  the  vague  descriptive  effect 
of  using  his  formula,  the  words  'Old  Crow'  would  become  less 
descriptive  and  more  arbitrary,  and  after  a  period  of  such  un- 
challenged use  they  would  become  dominantly  and  substantially 
a  mere  symbol  of  origin.  *  *  *  Words  which  were  at  first 
essentially  incapable  of  exclusive  appropriation  were  continually 
used  as  descriptive  by  the  only  one  who  could  truthfully  make 
such  use,  until,  by  change  of  circumstances  and  by  long  acqui- 
escence, they  had  come  to  indicate,  and  indicate  only,  a  particular 

that  case  {Davids  v.  Davids,  supra)  only  does  this  qualification  in  the  name 

was  not  considered  important;  and  so  it  fail  effectively  to  reach  the  ultimate 

cannot  be  here  controlling,  whether  consumer  (Coca-Cola  Co.  v.  Gay-Ola 

the  words  "Coca  Cola"  are  with  or  Co.,  200  Fed.  720,  119  C.  C.  A.  164 

without  a  hyphen,  or  in  script  or  in  and  211  Fed.  942),  but  a  trade-mark 

plain  letters.    Neither  is  infringement  right  which  could  be  so  avoided  would 

avoided  because  defendant  marks  its  be  of  no  value." 
bottles  "Fletcher's  Coca  Cola."    Not 


446  Registered  Trade-Marks 

product  of  a  particular  manufacturer.  It  might  be  otherwise, 
if  the  words  had  originally  been  more  purely  descriptive  of  quality 
or  method;  and  it  may  be  that  some  person  named  Crow  would 
even  yet  have  a  measure  of  right  to  call  his  product  'Crow.' "  ^^^ 

The  protection  afforded  a  trade-mark,  registered  under  the 
ten-year  clause,  is  not  such  that  the  owner  may  obtain  a  monopoly 
in  the  terms  set  out  in  the  first  three  provisos.  If  an  applicant 
obtains  registration  of  such  a  mark,  it  is  protected  only  m  its 
trade  or  secondary  sense.  Anyone  may  still  use  it  in  its  primary 
meaning,  so  long  as  he  does  not  create  confusion.  Hughes,  J., 
says:  ''In  the  case,  therefore,  of  marks  consisting  of  names  or 
terms  having  a  double  significance,  and  being  susceptible  of 
legitimate  uses  with  respect  to  their  primary  sense,  the  reproduc- 
tion, copy  or  miitation  which  constitutes  infringement  must  be 
such  as  is  calculated  to  mislead  the  public  with  respect  to  the 
origin  or  ownership  of  the  goods  and  thus  to  invade  the  right  of 
the  registrant  to  the  use  of  the  name  or  term  as  a  designation  of 
his  merchandise.  This  we  conceive  to  be  the  meaning  of  the 
statute."  '' 

Various  expressions,  used  in  the  ten-year  clause,  have  been  de- 
fined by  the  courts. 

"Exclusive  use"  is  taken  to  mean  a  trade  use  which  is  exclusive 
of  all  other  similar  trade  use.  It  does  not  mean  a  use  exclusive 
of  all  use  whatever  by  others.     Accordingly,  a  person  although 

""  Gaines   &   Co.   v.  Rock  Springs  (supra)   as  holding  that  the  statute 

Distilling  Co.,  226  Fed.  531,  C.  C  A.  directly  operates  to  grant  a  monopoly 

6th  Cir.,  1915.  to  one  who  rightfully  registers  under 

^*Davids  Co.  y.  Davids,  2S3  v.  S.4:Ql.  the  ten-year  clause  a  descriptive  or 

In  Nashville  Sijrup  Co.  v.  Coca  Cola  geographical   word.     We   take  it  as 

Co.,  215  Fed.  527,  Denison,  C.  J.,  says:  holding  that  the  statute  was  not  in- 

"In  view  of  the  settled  rule  that  the  tended  to  permit,  under  this  clause, 

Federal  trade-mark  statute  does  not  an  ineffective  and  useless  registration, 

create    any    exclusive    right,    as    the  and  so,   in  effect,   holding  that  the 

patent  statute  does,  but  only  recog-  statute     removed     from     descriptive 

nizes  a  right  which  has  been  already  words    which    had    been    exclusively 

acquired  by  exclusive  appropriation,  used  as  a  mark  in  interstate   com- 

and  then  furnishes  evidence  and  rem-  merce  for  10  years  the  bar  or  disability 

edies  {Trade-Mark  Cases,   100  U.  S.  caused  by  their  descriptive  character, 

82,  25  L.  ed.  550;  Hopkins  on  Trade-  and  made  them,  after  that  probation, 

Marks,    §27;    Hesseltine's    Law    of  subject  to  exclusive  appropriation  with 

Trade-]\Iarks,  p.  139),  we  do  not  re-  the  same  effect,  in  the  main,  as  if  the 

gard  the  decision  in  the  Davids  case  disability  had  never  existed." 


Unregistrable  Trade-Marks  447 

the  first  user  of  a  term,  cannot  register  it  under  this  clause,  if, 
prior  to  the  expiration  of  the  period  set  out,  another  has  used  it  in 
violation  of  his  alleged  rights.  ^^ 

This  interpretation  prevents  the  registration  of  a  mark,  when 
a  similar  mark  has  been  used  by  another  on  goods  of  the  same 
descriptive  properties,  although  it  has  been  used  in  a  deceptive 
manner.  ^^ 

A  like  result  is  reached  even  when  the  adverse  use  is  in  a  de- 
scriptive sense.  ^^ 

The  burden  is  on  the  applicant  to  show  exclusive  use.^^ 

In  the  cases  given  in  the  note,  registration  of  a  mark  was  re- 
fused on  the  ground  that  the  applicant  had  failed  to  establish 
exclusive  use  within  the  meaning  of  the  statute.  ^^ 

The  term  ''actual  use"  has  been  construed  so  as  to  deny  regis- 
tration to  a  mark  unless  it  has  been  used  for  the  prescribed  period 
in  connection  with  the  class  of  goods  in  respect  to  which  registra- 
tion is  sought.-" 

It  must  further  have  been  used  as  a  trade-mark. 

The  period  of  ten  years  ''actual  and  exclusive"  use  prescribed 
was  not  intended  by  Congress  to  include  the  use  of  a  name  or  mark 

15  In  Worcester  Brewing  Corporation  App.  D.  C.  348;  C.  A.  Gamhrill  Mfg. 
V.  Rueter  &  Co.,  30  App.  D.  C.  428,  Co.  v.  Waggoner-Gates  M.  Co.,  ^SKt^t^. 
Van  Orsdel,  J.,  said:  "Inasmuch  as  D.  C.  532;  Sears  &  Nichols  Co.  v. 
the  word  is  used  in  the.  statute  in  J5mA;eZe?/,  38  App.  D.  C.  530;//.  5ecA;er 
connection  with  the  words  'actual  &  Co.  \.  C.  A.  Gamhrill  Mfg.  Co.,  38 
use,'  and  both  expressions  are  used  to  App.  D.  C.  535. 
quaUfy  the  special  right  conferred  by  ^^  In  re  Spalding  &  Bros.,  27  App. 
this  provision  of  the  act,  we  hold  that  D.  C.  314.  Duell,  J.:  "The  question 
an  actual  use  must  be  shown  to  have  as  to  what  is  meant  by  the  term  'ex- 
been  possessed  and  enjoyed  by  the  elusive  use'  is  not  now  before  us;  but 
apphcant  to  the  sole  exclusion  of  all  the  objection  raised  to  the  registration 
others.  The  use  could  not  be  exclusive  is  broad  enough  to  present  the  ques- 
if,  during  the  period,  it  appears  that  tion  as  to  what  is  meant  by  the  term 
another  was  using  the  same  word  as  'actual  use.'  We  think  that  the  term 
a  trade-mark  upon  the  same  character  should  be  strictly  construed,  and  when 
of  goods."  In  re  Wright,  33  App.  D.  C.  an  applicant  seeks  a  registration  under 
510.  this    so-called  'ten-years'   clause    he 

18  In   re   Wright,  33   App.    D.    C.  should  not  be  permitted  to  register  a 

510.  word  or  name,  not  recognized  by  the 

"  Natural  Food  Co.  v.  Williams,  30  law  as  a  lawful  trade-mark,  for  any 

App.  D.  C.  348.  article  of  commerce  save  those  upon 

18  In  re  Hoff,  33  App.  D.  C.  233.  which  he  has  actually  used  the  mark 

1^  Natural  Food  Co.  v,  Williams,  30  for  the  required  period." 


448  Registered  Trade-Marks 

in  connection  with  a  patented  article.  If  registration  were  allowed 
under  such  circumstances  it  would  be  possible  to  prolong  the  life 
of  the  patent  monopoly  indefinitely.  Accordhigly  the  courts 
refuse  to  protect  a  mark  thus  registered.-^ 

But  if  the  term  applied  to  a  patented  article  has  not  become 
generic  it  may  be  registered. -- 

The  following  registered  marks  have  been  protected  against 
infringements  as  within  the  scope  of  the  ten-year  clause: 
"  Davids"  —  applied  to  ink.-^ 
"Beats-All"—      "   to  pencils.^^ 
"Coca-Cola"—    "   to  soft  drink. ^^ 
"  Bestyette"  —     "to  rain  coats. -"^ 
''Oneida  Traps"  "   to  game  traps. -^ 

"Crow  whiskey"  (the  name  "Crow"  being  the  name  of  the 
first  seller  of  this  brand  of  whiskey).-^'' 
§  230.  Who  May  Oppose. 
The  sixth  section  of  the  act  is  as  follows: 

"Sec.  6.  That  on  the  fihng  of  an  application  for  registration 
of  a  trade-mark  which  complies  with  the  requirements  of 
this  act,  and  the  payment  of  the  fees  herein  provided  for, 
the  Commissioner  of  Patents  shall  cause  an  examination 
thereof  to  be  made;  and  if  on  such  examination  it  shall  ap- 
pear that  the  applicant  is  entitled  to  have  his  trade-mark 
registered  under  the  provisions  of  this  act,  the  commissioner 
shall  cause  the  mark  to  be  published  at  least  once  in  the 

21  National  Lock  Washer  Co.  v.  ^4  American  Lead  Pencil  Co.  v. 
Hobbs  Mfg.  Co.,  210  Fed.  516.  "Then  Gottlieb  &  Sons,  181  Fed.  178. 
again,  in  construing  the  Trade-Mark  ^a  Nashville  Syrup  Co.  v.  Coca-Cola 
Act  of  1905,  it  is  a  reasonable  inference  Co.,  215  Fed.  527;  Coca-Cola  v.  N ash- 
that  Congress  did  not  intend  that  the  ville  Syrup  Co.,  200  Fed.  157;  Coco- 
provisions  of  that  act  should  operate  Cola  v.  Ajn.  Druggists'  Syndicate,  200 
to  continue  the  monopoly  through  Fed.  107;  Coca-Cola  v.  Deacon  Brown 
registration  under  it,  or  that  the  use  Bottling  Co.,  200  Fed.  105. 
of  a  word  in  connection  with  a  pat-  ^e  /^ey;  York  Mackintosh  v.  Flam, 
ented  article  and  during  the  life  of  the  198  Fed.  571. 

patent  should  be  availed  of  to  make  -^  Oneida     Community     v.     Oneida 

up  the  ten  years  of  actual  and  exclusive  Game  Trap  Co.,  168  App.  Div.   (N. 

use  necessary  to  authorize  registra-  Y.)  769. 

tion."  27a  jy     4     Gaines   v.  Rock   Springs 

"  Hughes  v.  Smith  Co.,  205  Fed.  302.  Co.,  226  Fed.  531 ;  C.  C.  A.,  6th  Cir., 

^-'Davids  Co.  v.  Davids,  233  U.  S.  1915. 
461. 


Who  May  Oppose  449 

Official  Gazette  of  the  Patent  Office.     Any  person  who  be- 

Heves  he  would  be  damaged  by  the  registration  of  a  mark 

may  oppose  the  same  by  filing  notice  of  opposition,  stating 

the  grounds  therefor,  in  the  Patent  Office  within  thirty  days 

after  the  pubhcation  of  the  mark  sought  to  be  registered, 

which  said  notice  of  opposition  shall  be  verified  by  the  person 

filing  the  same  before  one  of  the  officers  mentioned  in  sectioQ 

two  of  this  act.     An  opposition  may  be 

Mar!  riot".''  ''''  '''  "'  filed  by  a  duly  authorized  attorney,  but 

such   opposition  shall  be  null  and  void 

unless  verified  by  the  opposer  within  a  reasonable  time  after 

such  fiUng.     If  no  notice  of  opposition  is  filed  within  said 

time,  the  commissioner  shall  issue  a  certificate  of  registration 

therefor,  as  hereinafter  provided  for.     If  on  examination 

an  application  is  refused,  the  commissioner  shall  notify  the 

applicant,  giving  him  his  reasons  therefor." 

It  provides  that  on  filing  an  application  which  complies  with 

the  requirements  of  the  statute  and  the  payment  of  the  fees,  the 

Commissioner  of  Patents  shall  cause  an  examination  to  be  made 

as  to  the  registrability  of  the  trade-mark.    In  determining  whether 

a  trade-mark  is  registrable  it  must  be  considered  as  a  whole. -^ 

The  proceedings  leading  up  to  the  registration  of  a  trade-mark 

are  matters  of  procedure  which  may  be  changed  or  abolished. 

Accordingly  cases  pending  at  the  time  of  the  enactment  of  an 

amendatory  statute  are  governed  by  it,  unless  expressly  excepted 

from  its  operation. ^^'^    If  on  the  examination  it  appears  that  the 

applicant   is   entitled   to   registration,    the    commissioner   shall 

cause  the  trade-mark  to  be  published  at  least  once  in  the  Official 

Gazette."^''    Where  a  material  change  is  made  in  an  application 

for  registration  the  commissioner  will  be  justified  in  ordering  a 

second  publication.'^^    Any  person  who  believes  that  he  will  be 

damaged  by  the  registration  may  oppose  the  same  by  filing  notice 

of  opposition,  within  thirty  days,  verified   by  the  person  who 

28  In  re  Schweinfurter,  38  App.  D.  C.  Mark  Act  is  not  expressly  made  notice 
279.  of  the  rights  claimed,  and  so  it  can- 
's" DeFeranti  v.  Lyndmark,  30  App.  not  as  a  matter  of  law  be  called  a  con- 
D.  C.  417;   Given  v.  A^.  Y.  Athletic  structive  notice,  and  yet  that  it  in  fact 
Club,  42  App.  D.  C.  558.  tends  to  give  notice  is  well  known. 

28^  Theodore     Rectanus     v.     United         ^9  Carter  Medicine  Co.  v.  Barclay,  36 

Drug    Company,    226    Fed.    545-553.  App.  D.  C.  123. 
Registration  under  the  Federal  Trade- 


450  Registered  Trade-Marks 

filed  it.  An  opposcr  must  show  a  legal  damage  to  authorize 
him  to  oi)posc  successfully  the  registration  of  a  trade-mark. -^^ 
Use  of  a  name  as  a  trade  name,  although  not  such  as  would  create 
trade-mark  rights,  makes  it  permissible  for  the  person  so  using 
to  oppose  registration  of  the  name  by  another.-^''  Unless  an  op- 
position alleges  that  the  opposer  has  used  the  trade-mark,  it  is  de- 
murrable.""^ But  it  is  not  necessary  to  prove  actual  damage. ^^ 
Where  a  demurrer  to  an  opposition  is  sustained  upon  certain 
grounds,  the  appropriate  time  for  the  opposer  to  ask  have  to 
amend  his  notice  of  opposition  is  when  the  Examiner  of  Interfer- 
ences sustains  the  ground  of  demurrer. ^^"  Verification  by  an  attor- 
ney or  an  agent  was  held  not  sufficient  before  the  Amend- 
ment of  the  Act  of  March  2,  1907,^-  nor  is  a  verification 
sworn  to  before  a  notary  who  is  attorney  for  the  opposer,^^  and 
it  will  not  be  cured  by  filing  a  properly  verified  notice  after 
the  expiration  of  the  statutory  period. '^^  A  person  opposing 
the  registration  of  a  mark  under  the  terms  of  the  Act  will  not 
be  permitted  to  raise  the  question  of  the  constitutionality  of 
the  statute.^^  The  section  further  provides  that  if  there  is 
no  opposition  the  commissioner  shall  issue  a  certificate  of 
registration,  and  that  if  on  examination  an  application  is  re- 
fused the  commissioner  shall  notify  the  applicant,  giving  his 
reasons. 

29°  Wilson  V.  Hecht,  44  App.  D.  C.  296  Johnson  v.  Brandau,  32  App.  D. 

33;  Mcllhenny  v.  New  Iberia  Extract  C.  348. 

of  Tobasco  Pepper  Co.,  30  App.  D.  C.  ^°  Battle  Creek  Sanitarium  v.  Fxdler, 

337;  Battle  Creek  Sanitarium  Co.   v.  30  App.  D.  C.  411. 

Fuller,  30  App.  D.  C.  411.  =*'  Asbestone  Co.  v.  Carey  Mfg.  Co., 

In  this  case  the  court  said:  —  41  App.  D.  C.  507. 

"It  is  not  sufficient  for  the  opponent  ^'^  Battle  Creek  Sanitarium  v.  Fuller, 
to  say  that  he  beheves  he  would  be  30  App.  D.  C.  411. 
damaged.     He  must  allege  some  fact  ^^  Martin  v.  Martin  &  Bourne  Co., 
showing   an   interest  in  the   subject-  27  App.  D.  C.  59. 
matter  from  which  damage  might  be  ^^  Hall    Safe    Co.    v.    Herring-Hall 
inferred.     If  he  has  not  used  the  mark  Marvin  Safe  Co.,  31  App.  D.  C.  498. 
as  a  trade-mark  upon  goods  of  a  like  ^4  fjaH   g^jg   (Jq^   y.   Herring-Hall- 
description,  he  can  suffer  no  damage  Marvin  Safe  Co.,  31  App.  D.  C.  498. 
from    its    registration    by   another."  '^  Gaines  v.  Knecht,  27  App.  D.  C. 
Underwood   Typewriter  Co.  v.  A.   B.  530;  Gaines    v.   Carlton    Importation 
Dick  Co.,  36  App.  D.  C.  175;  Tim  &  Co.,  27  App.  D.  C.  571;  Buchanan- 
Co.  V.  Cluetl,  Peabody  &  Co.,  42  App.  Anderson  Co.  v.  Breen,  27  App.  D.  C. 
D.  C.  212.  573. 


Interference  451 

§  231.  Interference. 

''Sec.  7.  That  in  all  cases  where  notice  of  opposition  has 
been  filed  the  Commissioner  of  Patents  shall  notify  the  ap- 
plicant thereof  and  the  grounds  therefor. 

Whenever  application  is  made  for  the  registration  of  a 
trade-mark  which  is  substantially  identical  with  a  trade- 
mark appropriated  to  goods  of  the  same  descriptive  prop- 
erties, for  which  a  certificate  of  registration  has  been  pre- 
viously issued  to  another,  or  for  registration  of  which  an- 
other has  previously  made  application,  or  which  so  nearly 
resembles  such  trade-mark,  or  a  known  trade-mark  owned 
and  used  by  another,  as,  in  the  opinion  of  the  commissioner, 
to  be  likely  to  be  mistaken  therefor  by  the  public,  he  may 
declare  that  an  interference  exists  as  to  such  trade-mark,  and 
in  every  case  of  interference  or  opposition  to  registration  he 
shall  direct  the  examiner  in  charge  of  interferences  to  deter- 
mine the  question  of  the  right  of  registration  to  such  trade- 
mark, and  of  the  sufficiency  of  objections  to  registration, 
in  such  manner  and  upon  such  notice  to  those  interested  as 
the  commissioner  may  by  rules  prescribe. 

''  The  commissioner  may  refuse  to  register  the  mark  against 
the  registration  of  which  objection  is  filed,  or  may  refuse  to 
register  both  of  two  interfering  marks,  or  may  register  the 
mark,  as  a  trade-mark,  for  the  person  first  to  adopt  and  use 
the  mark,  if  otherwise  entitled  to  register  the  same,  unless  an 
appeal  is  taken,  as  hereinafter  provided  for,  from  his  deci- 
,  sion,  by  a  party  interested  in  the  proceeding,  within  such 
time  (not  less  than  twenty  days)  as  the  commissioner  may 
prescribe." 
The  seventh  section  requires   the   Commissioner  of  Patents 
to  notify  an  applicant  when  a  notice  of  opposition  has   been 
filed.     It  then  provides  that  when  an  application  is  made  to 
register  a  trade-mark  which   is   similar  to,   or  identical  to  a 
trade-mark  which  has  been  previously  registered,  or  for  which 
application  for  registration  has  been  made,  or  is  known  and 
used  by  another  and  which  is  appropriated  to  goods  of  the  same 
descriptive  properties,  the  commissioner  may  declare  an  inter- 
ference and  direct  an  examiner  to  determine  the  right  to  register 
the  trade-mark,  and  the  sufficiency  of  the  objections  to  such 
registration. 


452  Registered  Trade-Marks 

Goods  of  the  "same  descriptive  properties"  have  been  taken  to 
mean  goods  the  general  and  essential  characteristics  of  which  are 
the  same.  "The  test  is  whether  there  is  such  a  sameness  in  the 
distinguishing  characteristics  of  the  goods  as  to  be  likely  to  mis- 
lead the  general  public. ^^  See  title  "  Descriptive  quality  "  in  index. 
"The  only  purpose  of  an  interference  is  to  deteiTnine  the  question 
of  priority  of  adoption  and  use  "  of  a  trade-mark.  ^^  The  fact  that  an 
interference  is  granted  is  a  recognition  by  the  commissioner  that 
the  mark  for  which  registration  is  sought  is  "substantially  identi- 
cal" to  a  known  or  registered  trade-mark. ^^  A  decision  of  the 
Patent  Office  in  an  interference  case  not  appealed  from  is  final 
and  conclusive  of  every  question  which  might  have  been  pre- 
sented and  determined. ^^" 

The  fact  that  a  person  disclaims  the  exclusive  use  of  a  word 
forming  part  of  the  mark  for  which  registration  is  sought,  after 
an  opposition  has  been  filed  in  the  Patent  Office,  will  not,  of 
itself,  justify  a  dismissal  of  the  opposition. 3^'' 

An  apphcant  who  has  been  defeated  in  opposition  proceedings 
may  amend  his  application  so  as  to  omit  all  the  grounds  of  con- 
troversy involved  in  the  opposition  proceedings.^^" 

In  determining  the  question  of  similarity  all  doubts  should 
benefit  a  prior  registrant.  ^^  An  application  which  is  regular  in 
form  establishes  a  prima  fade  case  entitling  the  apphcant  to 
registration.  If  an  opposer  can  overcome  this  case  by  evidence, 
then  the  applicant  must  establish  his  right  to  registration  by  a 
fair  preponderance  of  evidence,*''  but  if  the  commissioner  calls  the 
attention  of  the  applicant  to  a  prior  registration  of  a  similar 
trade-mark  by  another,  then  the  burden  of  proof  is  on  the  ap- 
plicant to  show  first  adoption  and  use,  or  an  abandonment  by  the 

38  Johnson   Educator    Food    Co.    v.  ="**  Fishberk  Soap  Co.  v.  Kleeno  Mfg. 

Sylvanus  Smith  &  Co.,  Inc.,  37  App.  Co.,  44  App.  D.  C.  6;  Carmel  Wine 

D.  C.  107.  Co.  V.  California  Winery,  38  App.  D. 

"  Mathy  v.  Republic  Metalware  Co.,  C.  1. 

35  App.  D.  C.  151.  ^^^  Burrell  v.  Simplex  Electric  Heat- 

38  Becker  &  Co.  v.  Gambrill  Mfg.  Co.,  ing  Co.,  44  App.  D.  C.  452. 

38  App.  D.  C.  535.  ^^  Wayne  County  Preserving  Co.  v. 

^^  Blackford  v.  Wilan,  28  App.  D.  Burl  Olney  Canning  Co.,  32  App.  D.  C. 

C.  535;  United  States  ex  rcl.  Newcomb  279. 

Motor  Co.  V.  Moore,  30  App.  D.  C.  «  Wrigley  v.  Norris,  34  App.  D.  C. 

464;  Re  Herbst,  32  App.  D.  C.  269;  138. 
Re  Herbst,  44  App.  D.  C.  203. 


Appeals  to  the  Commissioner  453 

prior  registrant."  Mere  delay,  however,  on  the  part  of  the  owner 
of  a  trade-mark  in  asserting  his  right  cannot  be  the  ground  of  a 
successful  opposition/-  The  patentee  of  a  product  will  be  entitled 
to  register  a  trade-mark  used  in  connection  with  the  patented 
article  as  against  a  licensee  manufacturing  the  same  merchan- 
dise.''^ Where  an  opposer  has  used  a  term  in  a  descriptive  sense 
he  has  not  such  an  interest  in  it  as  will  entitle  him  to  oppose  the 
registration  of  such  term  by  another. ^^ 
§  232.  Appeals  to  the  Commissioner. 

"  Sec.  8.  That  every  applicant  for  the  registration  of  a 
trade-mark,  or  for  the  renewal  of  the  registration  of  a  trade- 
mark, which  application  is  refused,  or  a  party  to  an  inter- 
ference against  whom  a  decision  has  been  rendered,  or  a 
party  who  has  filed  a  notice  of  opposition  as  to  a  trade-mark, 
may  appeal  from  the  decision  of  the  examiner  in  charge 
of  trade-marks,  or  the  examiner  in  charge  of  interferences, 
as  the  case  may  be,  to  the  commissioner  in  person,  having 
once  paid  the  fee  for  such  appeal." 
Under  this  section  it  has  been  held  that  where  a  demurrer  is 
filed  to  a  notice  of  opposition  and  the  demurrer  is  overruled  and 
judgment  pro  confesso  rendered,  an  appeal  may  be  taken  to  the 
Commissioner  of  Patents  upon  the  single  question  of  the  suffi- 
ciency of  the  notice.     The  refusal  to  answer  or  further  plead  is 
equivalent  to  standing  upon  the  demurrer  and  permitting  judg- 
ment to  be  entered  from  which  this  section  provides  a  right  of 
appeal  to  the  Commissioner."*^"    Where  an  appeal  is  taken  it  is 
discretionary  with  the  Commissioner  to  allow  or  to  refuse  leave 
to  amend  an  opposition  notice.'*^''    Where   the   Commissioner 
sustains  the  determination  of  the  examiner  of  interferences  that 
neither  party  to  an  interference  is  entitled  to  register  a  trade- 
mark the  applicant's  remedy  is  to  Appeal  to  the  Court  of  Appeals 
of  the  District  of  Columbia.     When  the  time  to  so  appeal  expires 
the  decision  of  the  Commissioner  becomes  final  and  the  applicant 

*^  In  re  Nash  Hardware  Co.,  33  App.  **  Battle  Creek  Sanitarium  v.  Fuller, 

D.  C.  221.  30App.  D.  C.  411. 

«  Michigan     Condensed    Milk    Co.  ^^"  G.  &  J.  Tire  Co.  v.  G.  J.  G.  Motor 

V.  Kenneweg    Co.,    30   App.    D.    C.  Car  Co.,  39  App.  D.  C.  508. 

491.  "''^  Battle  Creek  Sanitarium  Co.   v. 

"  Mathy  v.  Republic  Metalware  Co.,  Fuller,  30  App.  D.  C.  411. 
35  App.  D.  C.  151. 


454  Registered  Trade-Marks 

cannot  thereafter  prosecute  his  original  appHcation  before  the 
examiner  of  trade-marks. '''*'' 

§  233.  Appeals  to  the  Courts.  —  The  ninth  section  of  the  Act 
is  as  follows: 

"Sec.  9.  That  if  an  applicant  for  registration  of  a  trade- 
mark, or  a  party  to  an  interference  as  to  a  trade-mark,  or  a 
party  who  has  filed  opposition  to  the  registration  of  a  trade- 
mark, or  party  to  an  application  for  the  cancellation  of  the 
registration  of  a  trade-mark,  is  dissatisfied  with  the  decision 
of  the  Commissioner  of  Patents,  he  may  appeal  to  the  court 
of  appeals  of  the  District  of  Columbia,  on  complying  with 
the  conditions  required  in  case  of  an  appeal  from  the  decision 
of  the  commissioner  by  an  applicant  for  patent,  or  a  party 
to  an  interference  as  to  an  invention,  and  the  same  rules  of 
practice  and  procedure  shall  govern  in  every  stage  of  such 
proceedings,  as  far  as  the  same  may  be  applicable." 
It  provides  that  all  persons  interested  in  proceedings  for  the 
registration  of  a  trade-mark  who  are  dissatisfied  with  the  decision 
of  the  commissioner  may  appeal  to  the  Court  of  Appeals  of  the 
District  of  Columbia.     The  proceedings  in  such  cases  are  to  be 
governed  by  the  same  rules  of  practice  and  procedure  as  in  patent 
cases. '^^    There  is  no  appeal  to  the  Court  of  Appeals  from  an  in- 
terlocutory order  of  the  commissioner.'*^    Nor  is  an  applicant  for 
the  renewal  of  registration  given  the  right  of  appeal  to  the  court. 
In  such  case  the  right  of  appeal  stops  with  the  commissioner.'*^ 
An  appeal  does  not  lie  from  an  order  of  the  Commissioner  of 
Patents  dissolving  an  interference  which  does  not  refuse  regis- 
tration to  either  party.     The  court  will  not  consider  acts  of  the 
commissioner  which  are  of  a  discretionary  character  unless  they 
are  clearly  a  gross  abuse  of  his  power. '*^ 

§  234.  Assignment  of  Trade-Mark.  —  The  tenth  section  of  the 
Act  is  as  follows: 

"  Sec.  10.  That  every  registered  trade-mark,  and  every 
mark  for  the  registration  of  which  application  has  been  made, 
together  with  the  application  for  registration  of  the  same, 

'*'  Re  Herbst,  32  App.  D.  C.  269.  D.  C.  491;  L.  Candee  &  Co.  v.  B.  F. 

45  Atkins  Co.  v.  Moore,  212  U.  S.  285.  Goodrich  Co.,  44  App.  D.C.  53;  Mann  v. 

«  Union  Distilling  Co.  v.  Schneider,  Brovm,  43  App.  D.  C.  457;  Union  Dis- 

29  App.  D.  C.  1.  tilling  Co.  v.  Schneider,  29  App.  D.  C.  1. 

*■'  In  re  Standard  Oil  Co.,  39  App.  «  In  re  Atkins,  29  App.  D.  C.  385. 


Certificates  of  Registration  455 

shall  be  assignable  in  connection  with  the  good  will  of  the 
business  in  which  the  mark  is  used.     Such  assignment  must 
be  by  an  instrument  in  writing  and  duly  acknowledged  ac- 
cording to  the  laws  of  the  country  or  State  in  which  the  same 
is  executed;  any  such  assignment  shall  be  void  as  against 
any  subsequent  purchaser  for  a  valuable  consideration,  with- 
out notice,  unless  it  is  recorded  in  the  Patent  Office  within 
three  months  from  date  thereof.     The  commissioner  shall 
keep  a  record  of  such  assignments." 
It  provides  for  the  assignment  of  registered  trade-marks  and 
marks  for  which  application  for  registration  has  been  made,  in 
connection  with  the  good-will  of  the  business  in  which  the  marks 
are  used.    If  the  trade-mark  is  assigned  without  a  transfer  of  the 
business  the  assignment  is  void."*^    The  assignment  must  be  in 
writing  duly  acknowledged  and  must  be  recorded  within  a  period 
of  three  months  in  order  to  bind  a  purchaser  for  value  without 
notice. 

§  235.  Certificates  of  Registration. 

"  Sec.  11.  That  certificates  of  registration  of  trade-marks 
shall  be  issued  in  the  name  of  the  United  States  of  America, 
under  the  seal  of  the  Patent  Office,  and  shall  be  signed  by  the 
Commissioner  of  Patents,  and  a  record  thereof,  together 
with  printed  copies  of  the  drawing  and  statement  of  the 
applicant,  shall  be  kept  in  books  for  that  purpose.  The 
certificate  shall  state  the  date  on  which  the  application  for 
registration  was  received  in  the  Patent  Office.  Certificates 
of  registration  of  trade-marks  may  be  issued  to  the  assignee 
of  the  applicant,  but  the  assignment  must  first  be  entered 
of  record  in  the  Patent  Office. 

"  Written  or  printed  copies  of  any  records,  books,  papers,  or 
drawings  relating  to  trade-marks  belonging  to  the  Patent 
Office,  and  of  certificates  of  registration,  authenticated  by 
the  seal  of  the  Patent  Office  and  certified  by  the  commissioner 
thereof,  shall  be  evidence  in  all  cases  wherein  the  originals 
could  be  evidence;  and  any  person  making  application 
therefor  and  paying  the  fee  required  by  law  shall  have  cer- 
tified copies  thereof. 

«  Eiseman  v.  Schiffer,  157  Fed.  473 ;  Corset  Co.  v.  Cohen,  38  App.  D.  C.  482; 
Sauers  Milling  Co.  v.  Kehlor  Flour  Mayer  F.  &  J.  Co.  v.  Virginia- 
Mill  Co.,  39  App.  D.  C.  535;  Jackson      Carolina  C.  Co.,  35  App.  D.  C.  425. 


456  Registered  Trade-Marks 

§  236.  Period  of  Protection. 

"  Sec.  12.  That  a  certificate  of  registration  shall  remain  in 
force  for  twenty  years,  except  that  in  the  case  of  trade-marks 
previously  registered  in  a  foreign  country  such  certificates 
shall  cease  to  be  in  force  on  the  day  on  which  the  trade-mark 
ceases  to  be  protected  in  such  foreign  country,  and  shall  in 
no  case  remain  in  force  more  than  twenty  years,  unless  re- 
newed. Certificates  of  registration  may  be  from  time  to 
time  renewed  for  like  periods  on  payment  of  the  renewal  fees 
required  by  this  act,  upon  request  by  the  registrant,  his  legal 
representatives,  or  transferees  of  record  in  the  Patent  Office, 
and  such  request  may  be  made  at  any  time  not  more  than 
six  months  prior  to  the  expiration  of  the  period  for  which  the 
certificates  of  registration  were  issued  or  renewed.  Certifi- 
cates of  registration  in  force  at  the  date  at  which  this  act 
takes  effect  shall  remain  in  force  for  the  period  for  which  they 
were  issued,  but  shall  be  renewable  on  the  same  conditions 
and  for  the  same  periods  as  certificates  issued  under  the  pro- 
visions of  this  act,  and  when  so  renewed  shall  have  the  same 
force  and  effect  as  certificates  issued  under  this  act." 
A  request  for  the  renewal  of  a  certificate  of  registration  is  not 

to  be  considered  in  the  same  light  as  a  new  application.     The 

procedure  to  be  followed  in  such  a  proceeding  is  set  out  in  this 

section.*^" 
§  237.  Cancellation  of  Registration. — The  thirteenth  section  of 

the  Act  is  as  follows: 

"Sec.  13.  That  whenever  any  person  shall  deem  himself  in- 
jured by  the  registration  of  a  trade-mark  in  the  Patent  Office 
he  may  at  any  time  apply  to  the  Commissioner  of  Patents 
to  cancel  the  registration  thereof.  The  commissioner  shall 
refer  such  application  to  the  examiner  in  charge  of  inter- 
ferences^ who  is  empowered  to  hear  and  determine  this 
question  and  who  shall  give  notice  thereof  to  the  registrant. 
If  it  appear  after  a  hearing  before  the  examiner  that  the 
registrant  was  not  entitled  to  the  use  of  the  mark  at  the  date 
of  his  application  for  registration  thereof,  or  that  the  mark 
is  not  used  by  the  registrant,  or  has  been  abandoned,  and 
the  examiner  shall  so  decide,  the  commissioner  shall 
cancel  the  registration.  Appeal  may  be  taken  to  the  com- 
*^  Ewing  v.  Standard  Oil  Co.,  42  App.  D.  C.  321. 


Fees  457 

missioner  in  person  from  the  decision  of  examiner  of  interfer- 
ences." 
It  provides  that  a  person  deeming  himself  injured  by  the  regis- 
tration of  a  mark  may  apply  to  the  commissioner  to  cancel  such 
registration.  The  case  is  then  referred  to  an  examiner,  who  gives 
notice  to  the  registrant  and  after  a  hearing  determines  whether 
the  registrant  was  entitled  to  the  use  of  the  mark  at  the  time  of 
the  application  and  whether  it  is  used  or  has  been  abandoned  by 
the  registrant.  If  he  decides  against  the  registrant,  the  registra- 
tion is  cancelled,  but  an  appeal  is  given  from  the  decision  of  the 
examiner  to  the  commissioner  in  person.  The  certificate  of 
registration  is  sufficient  prima  facie  to  indicate  compliance  with 
all  the  regulations  of  the  Act.  The  burden  of  showing  non- 
compliance is  on  the  opposer.^°  A  person  intervening  must  in  his 
petition  set  out  sufficient  facts  to  show  that  he  has  been  injured  by 
such  registration.^^  A  party,  who  upon  his  own  showing  has  no 
right  to  the  use  of  a  trade-mark  will  not  be  permitted  to  prosecute 
an  application  for  the  cancellation  of  such  trade-mark. ^^"^ 

The  provisions  of  this  section  permit  a  proceeding  for  the  can- 
cellation of  a  trade-mark,  registered  under  a  prior  trade-mark 
Statute, ^^''  or  under  the  ten  year  clause  of  this  act."'  The  pur- 
pose of  this  section  is  to  enable  a  person  who  has  been  injured  by 
the  registration  of  a  trade-mark  to  institute  proceedings  to  obtain 
a  cancellation  of  the  registration.  This  form  of  relief  was  not 
provided  for  in  the  previous  Federal  Trade-Mark  Laws.  The 
section  relates  entirely  to  the  procedure  in  the  Patent  Office, 
and  is  remedial  in  character.  The  remedy  is  "full,  fair  and  sum- 
mary." No  time  limit  is  fixed  for  an  application  for  cancella- 
tion."'' 

§  238.  Fees.  —  The  statute  provides  for  the  payment  of  fees  in 
the  following  language : 

"  Sec.  14.  That  the  following  shall  be  the  rates  for  trade- 
mark fees: 

"  On  filing  each  original  application  for  registration  of  a 
trade-mark,  ten  dollars:  Provided,  That  an  application  for 

^Hughes  v.  Smith,  209  Fed.  37.  "'^  Slamatopoulos  v.  Stephano  Bros., 

"  Mcllhenny's  Sons  v.  New  Iberia  41  App.  D.  C.  590. 

Co.,  30  App.  D.  C.  337.  ^'<^  Mcllhcnny  v.  New  Iberia  Co.,  34 

^i"  Slandard  Brewery   Co.   v.    Inter-  App.   D.   C  430. 

boro  Brewing  Co.,  44  App.  D.  ().  193.  '"'^  Planten  v.  Gedney,  224  Fed.  382. 


458  Registered  Trade-Marks 

registration  of  a  trade-mark  pending  at  the  date  of  the  pas- 
sage of  this  act,  and  on  which  certificate  of  registration  shall 
not  have  issued  at  such  date,  may,  at  the  option  of  the  appli- 
cant, be  proceeded  with  and  registered  under  the  provisions 
of  this  act  without  the  payment  of  further  fee. 

"  On  filing  each  application  for  renewal  of  the  registration 
of  a  trade-mark,  ten  dollars. 

"  On  filing  notice  of  opposition  to  the  registration  of  a  trade- 
mark, ten  dollars. 

"  On  an  appeal  from  the  examiner  in  charge  of  trade-marks 
to  the  Commissioner  of  Patents,  fifteen  dollars. 

"  On  an  appeal  from  the  decision  of  the  examiner  in  charge 
of  interferences,  awarding  ownership  of  a  trade-mark  or 
canceling  the  registration  of  a  trade-mark,  to  the  Commis- 
sioner of  Patents,  fifteen  dollars. 

*'  For  certified  and  uncertified  copies  of  certificates  of  regis- 
tration and  other  papers,  and  for  recording  transfers  and 
other  papers,  the  same  fees  as  required  by  law  for  such 
copies  of  patents  and  for  recording  assignments  and  other 
papers  relating  to  patents." 
§  239.  Repayment  of  Fees. — •  The  statute  provides  for  the  re- 
payment of  fees  paid  by  mistake  as  follows: 

*' Sec.  15.  That  sections  forty-nine  hundred  and  thirty-five 
and  forty-nine  hundred  and  thirty-six  of  the  Revised  Stat- 
utes, relating  to  the  payment  of  patent  fees  and  to  the  re- 
payment of  fees  paid  by  mistake,  are  hereby  made  appli- 
cable to  trade-mark  fees." 
§  240.  Liability  for  Infringement.  —  The  sixteenth  section  of 
the  Act  provides : 

"  Sec.  16.  That  the  registration  of  a  trade-mark  under  the 
provisions  of  this  act  shall  be  prima  facie  evidence  of  owner- 
ship. Any  person  who  shall,  without  the  consent  of  the  owner 
thereof,  reproduce,  counterfeit,  copy,  or  colorably  imitate 
any  such  trade-mark  and  affix  the  same  to  merchandise  of 
substantially  the  same  descriptive  properties  as  those  set 
forth  in  the  registration,  or  to  labels,  signs,  prints,  packages, 
wrappers,  or  receptacles  intended  to  be  used  upon  or  in 
connection  with  the  sale  of  merchandise  of  substantially  the 
same  descriptive  properties  as  those  set  forth  in  such  regis- 
tration, and  shall  use,  or  shall  have  used,  such  reproduction, 


Liability  for  Infringement  459 

counterfeit,  copy,  or  colorable  imitation  in  commerce  among 
the  several  States,  or  with  a  foreign  nation,  or  with  the 
Indian  tribes,  shall  be  liable  to  an  action  for  damages  there- 
for at  the  suit  of  the  owner  thereof;  and  whenever  in  any 
such  action  a  verdict  is  rendered  for  the  plaintiff,  the  court 
may  enter  judgment  therein  for  any  sum  above  the  amount 
found  by  the  verdict  as  the  actual  damages,  according  to  the 
circumstances  of  the  case,  not  exceeding  three  times  the 
amount  of  such  verdict,  together  with  the  costs." 
It  makes  the  registration  of  a  trade-mark  prima  facie  evidence 
of  ownership. ^2     Though  the  act  does  not  provide  that  registra- 
tion of  a  trade-mark  is  prima  facie  evidence  of  its  validity,  the 
Patent  Office  is  not  authorized  to  register  anything  but  a  trade- 
mark.    Incidentally,  therefore,  registration  involves  the  consider- 
ation by  the  Commissioner  of  Patents  of  whether  the  device  for 
which  registration  is  sought  may  be  the  subject  of  exclusive  ap- 
propriation as  a  trade-mark.     That  officer's  decision  of  that 
proposition  is  entitled  to  respect  as  being  prima  facie  correct. '^^ 
Registration  of  a  trade-mark  under  the  Federal  Statute  is  not 
conclusive  upon  the  State  courts  as  to  its  validity  or  the  right 
to   the  registry. ^2''     The  prima  facie  proof  may  be  overcome 
if  it  is  made  to  appear  that  the  registrant  was  not  entitled  to  the 
mark.^^    The  section  provides  that  a  person  who  uses  without  the 
consent  of  the  owner,  a  reproduction  or  simulation  of  a  trade-mark 
in  connection  with  merchandise  of  the  same  descriptive  properties 
as  those  set  out  in  the  registration,  in  commerce  among  the  sev- 
eral states  or  with  foreign  nations  or  with  the  Indian  tribes  shall 
be  liable  to  an  action  for  damages;  and  that  when  in  such  suit 
a  verdict  is  rendered  for  the  plaintiff  judgment  may  be  rendered 
for  a  sum  not  exceeding  three  times  the  amount  of  the  verdict. 
This  provision  applies  to  all  trade-marks  that  are  within   the 
Act  except  those  falling  within  the  twenty-first  section.^'     If 
the  registered  mark  is  not  a  valid  trade-mark  for  the  reason  that 
it  has  not  been  attached  to  an  article  of  merchandise,  infringe- 
ment of  such  mark  will  not  entitle  the  registrant  to  damages." 

^^  Spiegel  v.  Zuckerman,  188   Fed.  ^^  Speigel  v.  Zuckerman,  188  Fed.  Q3. 

63.  ^*  Thaddeus  Davids  Co.   v.   Davids, 

*2"  Planten  v.  Gedney,  221  Fed.  281.  233  U.  S.  461. 

^2**  Buffalo    Rubber   Co.    v.    Batavia  ^*  Diederich  v.  Schneider  Liquor  Co., 

Rubber  Co.,  90  Misc.  418.  195  Fed.  35. 


400 


Registered  Trade-Marks 


§  241.  Jurisdiction  of  the  Courts.  —  The  seventeenth  section 
of  the  Act  is  as  follows: 

"  Sec.   17.  That  the  circuit  and  territorial  courts  of  the 
United  States  and  the  supreme  court  of  the  District  of  Co- 
lumbia shall  have  original  jurisdiction,  and  the  circuit  courts 
of  appeal  of  the  United  States  and  the  court  of  appeals  of 
the  District  of  Columbia  shall  have  appellate  jurisdiction  of 
all  suits  at  law  or  in  equity  respecting  trade-marks  regis- 
tered in  accordance  with  the  provisions  of  this  act,  arising 
under  the  present  act,  without  regard  to  the  amount  in  con- 
troversy." 
The  fact  that  an  action  is  based  upon  the  infringement  of  a 
registered  trade-mark  does  not,  of  itself,  confer  jurisdiction  upon 
the  courts  enumerated  in  this  section.     Facts  necessary  to  confer 
jurisdiction  must  be  averred.     As  the  federal  trade-mark  legisla- 
tion is  based  upon  the  provision  of  the  Constitution  granting 
Congress  power  to  regulate  commerce  among  the  several  states, 
etc.,  it  must  be  shown  that  the  infringement  of  the  trade-mark 
claimed,  arose  in  an  interstate  use  actual  or  threatened."''    The 


^^  Louis  Bergdoll  Brewing  Co.  v. 
Bergdoll  Brewing  Co.,  218  Fed.  131. 

"The  Trade-Mark  Legislation  of 
Congress  is  based  upon  that  provision 
of  the  Constitution  which  confers 
power  upon  Congress  to  regulate  com- 
merce among  the  several  States,  etc. 
The  use  of  a  trade-mark  may  be  con- 
fined to  Intrastate  Commerce,  or  it 
may  be  extended  into  the  Federal 
field.  With  the  regulation  of  trade 
when  thus  confined  to  the  limits  of  a 
single  state  Congress  has  nothing  to  do. 
Its  power  and  authority  is  limited 
to  interstate  transactions,  *  *  * 
The  registration  protects  the  use  of  a 
trade-mark  only  in  interstate  trans- 
actions. When  the  controversy  is 
between  citizens  of  the  same  state, 
and  the  jurisdiction  of  the  court  de- 
pends upon  the  averment  that  the  case 
arises  under  the  laws  of  the  United 
States,  then  the  complaint  must  he 
an    infringement   of   the    proprietary 


right  which  arises  out  of  the  registra- 
tion and  the  facts  necessary  to  confer 
jurisdiction  must  be  averred.  *  *  * 
As  the  averment  is  of  a  registered 
trade-mark  under  the  provisions  of 
the  Act  of  Congress,  this  may  be  taken 
to  include  an  averment  of  all  the  facts 
necessary  to  found  the  right  of  the 
plaintiff  to  the  trade-mark  registra- 
tion, and  therefore  to  include  the 
averment  of  an  interstate  use  of  the 
trade-mark  by  the  plaintiff.  There  is 
no  averment,  however,  of  an  interstate 
use,  actual  or  threatened,  by  the  de- 
fendant. The  averment  quoted,  that 
injury  had  been  caused  to  the  business 
of  the  plaintiff  here  'and  elsewhere 
throughout  the  United  States,'  is 
not  an  averment  of  interstate  use. 
The  bill  should  accordingly  be  dis- 
missed for  want  of  jurisdiction." 

Burnstein  v.  Danwitz,  190  Fed.  604, 
holds:  — 

"That  the  Federal  Court  is  without 


Appeals  to  the  United  States  Supreme  Court     461 

jurisdiction  given  to  the  Federal  Courts  in  cases  arising  under  the 
statute  is  not  expressly  exclusive.  It  would,  therefore,  appear 
proper  for  the  State  courts  to  determine  controversies  involving 
a  registered  trade-mark. ^^  Where  an  opposition  to  the  registra- 
tion of  a  mark  as  a  trade-mark,  based  on  use  of  a  similar  mark  by 
the  opposer  on  the  same  class  of  goods,  is  dismissed,  and  an  appeal 
is  taken  to  the  Court  of  Appeals  of  the  District  of  Columbia,  the 
Patent  Office  and  not  the  Court  must  determine  as  to  the  regis- 
trability of  the  applicant's  mark.^^'''' 

§  242.  Appeals  to  the  United  States  Supreme  Court.  —  The 
provision  for  an  appeal  to  the  Supreme  Court  of  the  United 
States  is  contained  in  the  eighteenth  section  of  the  act.  It  is  as 
follows : 

''Sec.  18.  That  writs  of  certiorari  may  be  granted  by  the 
Supreme  Court  of  the  United  States  for  the  review  of  cases 
arising  under  this  act  in  the  same  manner  as  provided  for 
patent  cases  by  the  act  creating  the  circuit  court  of  appeals." 

The  right  of  appeal  to  the  United  States  Supreme  Court  above 
provided  has  been  held  exclusive.^''''  The  Circuit  Courts  of 
Appeals  act  to  which  reference  is  made  in  this  section  has  been 

jurisdiction    in    a    case    where    both  under   the   patent   laws,   as   respects 

parties  are  citizens  of  the  same  state,  the   remedy   by   certiorari,    Congress 

and  where  nothing  either  in  the  bill  or  undoubtedly  intended  that  this  rem- 

in  the  decree  confined  the  relief  prayed  edy  should  have  the  same  attributes 

for,  or  granted  to  commerce  carried  in  the  one  class  of  cases  as  in  the 

on  with  foreign  nations,  or  among  the  other.     We   already  have   seen   that 

several   States,   or   with   the   Indian  the  Circuit  Courts  of  Appeals  Act,  in 

tribes."  §  6,  made  it  exclusive  in  cases  arising 

^^^  Oneida     Community     L't'd.     v.  under  the  patent  laws.     Before  the 

Oneida  Game  Trap  Co.,  168  App.  Div.  adoption  of  the  Code,  this  court  said 

(N.  Y.)  769;  Kayser  &  Co.  v.  Italian  in  Hutchinson  Pierce  &  Co.  v.  Loewy, 

Silk   Underwear   Co.,   160  App.   Div.  217  U.  S.  457,  460,  a  case  Hke  this: 

(N.  Y.)  607;  Traiser  v.  Doty  Cigar  Co.,  "We  are  of  opinion  that  this  appeal 

198  Mass.  327.  will  not  lie,  and  that  the  remedy  by 

^^^^  Alaska    Packers    Ass'n   v.   Ad-  certiorari  is  exclusive.     *    *     *     Wq 

miralty  Trading  Co.,  43  App.  D.  C.  think  that  the  language  of  §  18  places 

198.  suits  brought  under  the  trade-mark 

^^'^  Hutchinson    Pierce     &     Co.     v.  act  [February  20,  1905]  plainly  within 

Loewy,  217  U.  S.  457;  Smith  v.  Atlas  the  scope  of  the  act  establishing  the 

Mfg.  Co.,  231  U.  S.  348.  Court  of  Appeals  [March  3,  1891]  and 

Van  Devanter,  J.:  that  a  final  decision  of  that  court  can 

"In  placing  such  trade-mark  cases  be  reviewed  in  this  Court  only  upon 

upon  the  same  footing  as  cases  arising  certiorari.     *     *     *  "     Merriam     Co. 


462  Registered  Trade-Marks 

superseded  by  being  incorporated  into  the  Code,  but  the  section 
has  not  thereby  lost  any  of  its  original  effect,  for  §  292  of  the  Code 
requires  the  reference  to  be  construed  as  if  naming  the  very  sec- 
tions of  the  Code  into  which  the  Circuit  Courts  of  Appeals  act 
has  been  carried. ^^"^ 

§  243.  Scope  of  Court's  Powers. 

"  Sec.  19.  That  the  several  courts  vested  with  jurisdiction 
of  cases  arising  under  the  present  act  shall  have  power  to 
grant  injunctions,  according  to  the  course  and  principles  of 
equity,  to  prevent  the  violation  of  any  right  of  the  owner  of 
a  trade-mark  registered  under  this  act,  on  such  terms  as  the 
court  may  deem  reasonable;  and  upon  a  decree  being  ren- 
dered in  any  such  case  for  wrongful  use  of  a  trade-mark  the 
complainant  shall  be  entitled  to  recover,  in  addition  to  the 
profits  to  be  accounted  for  by  the  defendant,  the  damages 
the  complainant  has  sustained  thereby,  and  the  court  shall 
assess  the  same  or  cause  the  same  to  be  assessed  under  its 
direction.  The  court  shall  have  the  same  power  to  increase 
such  damages,  in  its  discretion,  as  is  given  by  section  sixteen 
of  this  act  for  increasing  damages  found  by  verdict  in  actions 
of  law ;  and  in  assessing  profits  the  plaintiff  shall  be  required 
to  prove  defendant's  sales  only;  defendant  must  prove  all 
elements  of  cost  which  are  claimed." 
§  244.  Court  may  Destroy  Infringing  Marks. 

''  Sec.  20.  That  in  any  case  involving  the  right  to  a  trade- 
mark registered  in  accordance  with  the  provisions  of  this 
act,  in  which  the  verdict  has  been  found  for  the  plaintiff,  or 
an  injunction  issued,  the  court  may  order  that  all  labels, 
signs,  prints,  packages,  wrappers,  or  receptacles  in  the  pos- 
session of  the  defendant,  bearing  the  trade-mark  of  the  plain- 
tiff or  complainant,  or  any  reproduction,  counterfeit,  copy, 
or  colorable  imitation  thereof,  shall  be  delivered  up  and 
destroyed.  Any  injunction  that  may  be  granted  upon  hear- 
ing, after  notice  to  the  defendant,  to  prevent  the  violation 
of  any  right  of  the  owner  of  a  trade-mark  registered  in  ac- 
cordance with  the  provisions  of  this  act,  by  any  circuit  court 

V.  Syndicate  Publishing  Co.,  237  U.  S.  sions  making  the  jurisdiction  of  the 

618-621.  Circuit  Court  of  Appeals  final." 

Day,  J.,  wrote:  ^^  Smith   v.   Atlas   Mfg.    Co.,   231 

"The  Act  of  1905  contains  provi-  U.  S.  348. 


Trade-Marks  Fraudulently  Used  463 

of  the  United  States,  or  by  a  judge  thereof,  may  be  served  on 
the  parties  against  whom  such  injunction  may  be  granted 
anywhere  in  the  United  States  where  they  may  be  found, 
and  shall  be  operative,  and  may  be  enforced  by  proceedings 
to  punish  for  contempt,  or  otherwise,  by  the  court  by  which 
such  injunction  was  granted,  or  by  any  other  circuit  court, 
or  judge  thereof,  in  the  United  States,  or  by  the  Supreme 
Court  of  the  District  of  Columbia,  or  a  judge  thereof.     The 
said  courts,  or  judges  thereof,  shall  have  jurisdiction  to  en- 
force said  injunction,  as  herein  provided,  as  fully  as  if  the 
injunction  had  been  granted  by  the  circuit  court  in  which  it 
is  sought  to  be  enforced.     The  clerk  of  the  court  or  judge 
granting  the  injunction  shall,  when  required  to  do  so  by 
the  court  before  which  application  to  enforce  said  injunction 
is  made,  transfer  without  delay  to  said  court  a  certified  copy 
of  all  the  papers  on  which  the  said  injunction  was  granted 
that  are  on  file  in  his  office." 
§  245.  Trade-Marks  Fraudulently  Used.  —  In  section  twenty- 
one,  the  Act  refuses  relief  to  the  owner  of  a  trade-mark  who 
uses  it  in  an  unlawful  business,  on  an  injurious  article,  or  for 
the  purpose  of  deceiving  the  public.     One  who  has  abandoned 
it,    or    obtained   his   certificate   fraudulently   will   not   be   pro- 
tected. 

The  words  of  the  section  are: 

"Sec.  21.  That  no  action  or  suit  shall  be  maintained  un- 
der the  provisions  of  this  act  in  any  case  when  the  trade- 
mark is  used  in  unlawful  business,  or  upon  any  article  injurious 
in  itself,  or  which  mark  has  been  used  with  the  design  of  de- 
ceiving the  public  in  the  purchase  of  merchandise,  or  has 
been  abandoned,  or  upon  any  certificate  of  registration  fraud- 
ulently obtained." 
In  construing  abandonment,  the  courts  have  held  that  "aban- 
donment being  in  nature  a  forfeiture,   it  is  incumbent  upon 
the  person  alleging  it  to  prove  by  clear  and  convincing  evidence 
that  the  right  claimed  has  been  relinquished.     *     *     *    ^  mark 
will  never  be  held  abandoned,  unless  a  clear  intention  to  do  so 
appears."  ^^     See  title  ''Abandonment"  in  index.     The  use  of 
the  mark  in  connection  with  merchandise  containing  different 
ingredients  from  those  with  which  it  was  originally  used  is  suffi- 
5«  Mathy  v.  Republic  Metalivare  Co.,  35  App.  D.  C.  152,  156. 


404  Registered  Trade-Marks 

cient  to  work  a  forfeiture. -^^  Also  assignment  of  a  trade-mark 
without  the  business  is  invahd  as  an  assignment;  but,  if  ac- 
companied by  a  discontinuance  of  use  of  the  trade-mark  the 
courts  will  consider  the  same  abandoned. ^*^  Abandonment  is 
not  esta)3lished  by  showing  that  an  owner  has  used  another 
mark  in  connection  with  the  same  goods.^^ 
Hazel,  D.  J.,  says  in  Gorham  v.  Weinlrauh-^^" 
"It  is  unimportant  that  complainant  has  registered  other 
trade-marks  which  it  applies  to  articles  differing  in  kind  or  quality. 
Such  additional  registered  trade-marks  were  not  an  abandonment 
of  complainant's  conmion-law  trade-mark,  and  their  registration 
has  not  deprived  it  of  right  to  protection  in  the  use  thereof." 

§  246.  Cancellation  of  the  Registration  of  a  Trade-mark  by  a 
Court  in  an  Equity  Suit. —  The  Statute  provides: 

"Sec.  22.  That  whenever  there  are  interfering  registered 
trade-marks,  any  person  interested  in  any  one  of  them  may 
have  relief  against  the  interfering  registrant,  and  all  persons  in- 
terested under  him,  by  suit  in  equity  against  the  said  regis- 
trant; and  the  court,  on  notice  to  adverse  parties  and  other 
due  proceedings  had  according  to  the  course  of  equity,  may 
adjudge  and  declare  either  of  the  registrations  void  in  whole 
or  in  part  according  to  the  interest  of  the  parties  in  the  trade- 
mark, and  may  order  the  certificate  of  registration  to  be 
dehvered  up  to  the  Commissioner  of  Patents  for  cancellation." 
The  Court  directed  the  cancellation  of  a  trade-mark  under 
this  section  in  W aides   &   Co.   v.   International  Manufacturer's 
Agency.-'^ 

§  247.  Effect  of  the  Act  on  Prior  Rights.  —  The  twenty-third  sec- 
tion of  the  Act  provides  that  nothing  in  the  Act  shall  abridge  the 
rights  a  person  has  to  use  remedy  at  law  or  equity. 

"  Sec.  23.  That  nothing  in  this  act  shall  prevent,  lessen, 
impeach,  or  avoid  any  remedy  at  law  or  in  equity  which  any 
party  aggrieved  by  any  wrongful  use  of  any  trade-mark 
might  have  had  if  the  provisions  of  this  act  had  not  been 
passed." 
Registration  of  a  word  capable  of  exclusive  appropriation  has 

"  Independent  Baking  Powder  Co.  v.  °^  Dr.    Dadirrian    &    Sons    Co.    v. 

Boorman,  175  Fed.  448.  Hamnstcin,  37  Misc.  23. 

^  Eiseman    v.    Schiffer,    157    Fed.  '^  196  Fed.  957. 

473.  '"^  237  Fed.  502. 


Pending  Applications  465 

no  effect  upon  the  substantive  rights  of  the  parties,  excepting  its 
evidential  force  to  make  a  prima  facie  case  of  title. ^^^ 

The  passage  of  the  law  has  been  held  not  to  affect  the  jurisdic- 
tion of  the  state  courts  in  trade-mark  cases. ^"^ 

§  248.  Pending  Applications.  —  The  twenty-fourth  section  of 
the  Act  is  as  follows: 

"  Sec.  24.  That  all  applications  for  registration  pending  in 
the  office  of  the  Commissioner  of  Patents  at  the  time  of  the 
passage  of  this  act  may  be  amended  with  a  view  to  bringing 
them,  and  the  certificate  issued  upon  such  applications,  un- 
der its  provisions,  and  the  prosecution  of  such  applications 
may  be  proceeded  with  under  the  provisions  of  this  act." 
It  provides  for  the  amendment  of  applications  pending  at 
the  time  of  the  passage  of  the  Act  so  as  to  conform  with  the  new 
requirements,  and  for  the  further  prosecution  of  such  applications 
under  its  provisions.    The  word  ''pending"  herein  used  must  be 
taken  in  its  ordinary  sense.    x\n  application  which  has  been  re- 
fused registration  under  the  former  statute  cannot  be  said  to  be 
pending  within  the  meaning  of  the  x\ct." 
§  249.  Registration  Fraudulently  Procured. 

'^  Sec.  25.  That  any  person  who  shall  procure  registration 
of  a  trade-mark,  or  entry  thereof,  in  the  office  of  the  Com- 
missioner of  Patents  by  a  false  or  fraudulent  declaration  or 
representation,  oral  or  in  writing,  or  by  any  false  means, 
shall  be  liable  to  pay  any  damages  sustained  in  consequence 
thereof  to  the  injured  party,  to  be  recovered  by  an  action  on 
the  case." 
The  courts  have  held  this  section  inapphcable  to  a  case  where  a 
person  registered  a  trade-mark  for  straight  whiskey  claiming  use 
since  1835  and  that  no  other  person  had  the  right  to  use  the  mark, 
where  it  appeared  that  another  had  a  defensive  right  to  use  the 
mark  on  blended  whiskey.^^" 
§  250.  Rules  for  Conducting  Proceedings. 

"  Sec.  26.  That  the  Conmiissioner  of  Patents  is  authorized 
to  make  rules  and  regulations,  not  inconsistent  with  law,  for 

^'■^  Gaines  &  Co.  v.  Rock  Spring  Dis-  "  In  re  Mark  Cross  Co.,  26  App. 

tilling  Co.,  226  Fed.  531.  D.  C.  101. 

«"  Traiser   v.   Dotij  Cigar  Co.,    198  '''"  W.   A.   Gaines   v.  Rock    Spring 

Mass.  327;  Kayser  &  Co.  v.  Italian  Distilling  Co.,  226  Fed.  531. 
Silk  Underwear  Co.,  160  App.  Div.  607. 


4()G  Registered  Traue-Marks 

the  conduct  of  proceedings  in  reference  to  the  registration  of 
trade-marks  provided  for  by  this  act." 
§  261.  Importation  of  Articles  Bearing  Infringing  Marks. 

"  Sec.  27.  That  no  article  of  imported  merchandise  which 
shall  copy  or  simulate  the  name  of  any  domestic  manufac- 
ture, or  manufacturer  or  trader,  or  of  any  manufacturer  or 
trader  located  in  any  foreign  country  which,  by  treaty,  con- 
vention, or  law  affords  similar  privileges  to  citizens  of  the 
United  States,  or  which  shall  copy  or  simulate  a  trade-mark 
registered  in  accordance  with  the  provisions  of  this  act  or 
shall  bear  a  name  or  mark  calculated  to  induce  the  public 
to  believe  that  the  article  is  manufactured  in  the  United 
States,  or  that  it  is  manufactured  in  any  foreign  country  or 
locality  other  than  the  country  or  locality  in  which  it  is  in 
fact  manufactured,  shall  be  admitted  tD  entry  at  any  cus- 
tomhouse of  the  United  States;  and,  in  order  to  aid  the  officers 
of  the  customs  in  enforcing  this  prohibition,  any  domestic 
manufacturer  or  trader,  and  any  foreign  manufacturer  or 
trader,  who  is  entitled  under  the  provisions  of  a  treaty,  con- 
vention, declaration,  or  agreement  between  the  United  States 
and  any  foreign  country  to  the  advantages  afforded  by  law 
to  citizens  of  the  United  States  in  respect  to  trade-marks 
and  commercial  names,  may  require  his  name  and  residence, 
and  the  name  of  the  locality  in  which  his  goods  are  manufac- 
tured, and  a  copy  of  the  certificate  of  registration  of  his 
trade-mark,  issued  in  accordance  with  the  provisions  of  this 
act,  to  be  recorded  in  books  which  shall  be  kept  for  this  pur- 
pose in  the  Department  of  the  Treasury,  under  such  regula- 
tions as  the  Secretary  of  the  Treasury  shall  prescribe,  and 
may  furnish  to  the  department  facsimiles  of  his  name,  the 
name  of  the  locality  in  which  his  goods  are  manufactured,  or 
of  his  registered  trade-mark;  and  thereupon  the  Secretary 
of  the  Treasury  shall  cause  one  or  more  copies  of  the  same  to 
be  transmitted  to  each  collector  or  other  proper  officer  of 
customs. 
This  section  has  been  held  not  to  apply  to  a  case  where  genuine 
goods  manufactured  abroad,  identified  by  a  trade-mark  regis- 
tered in  the  United  States  Patent  Office  were  imported  by  a  third 
person.^^** 

61^  Fred   Gretsch    Manufacturing   Company    v.   Michael  E.  Schoening    and 


Notice  of  Registration 


407 


§  252.  Notice  of  Registration.  —  The  twenty-eighth  section  of 
the  Act  is  in  these  words: 

"  Sec.  28.  That  it  shall  be  the  duty  of  the  registrant  to  give 
notice  to  the  public  that  a  trade-mark  is  registered,  either 
by  affixing  thereon  the  words  'Registered  in  U.  S.  Patent 
Office/  or  abbreviated  thus,  'Reg.  U.  S.  Pat.  Off.,'  or  when, 
from  the  character  or  size  of  the  trade-mark,  or  from  its 
manner  of  attachment  to  the  article  to  which  it  is  appro- 
priated, this  can  not  be  done,  then  by  affixing  a  label  contain- 
ing a  like  notice  to  the  package  or  receptacle  wherein  the 
article  or  articles  are  inclosed;  and  in  any  suit  for  infringe- 
ment by  a  party  failing  so  to  give  notice  of  registration  no 
damages  shall  be  recovered,  except  on  proof  that  the  de- 
fendant was  duly  notified  of  infringement  and  continued  the 
same  after  such  notice." 
It  sets  out  that  a  registrant  shall  give  notice  of  registration. 


Dudley  Field  Malone,  the  latter  Col- 
lector of  the  Port  of  New  York,  6 
Trade-Mark  Reporter,  224,  Opinion 
on  Appeal  not  reported. 

The  defendant,  Schoening,  was  ex- 
clusive sales  agent  for  the  United 
States  of  certain  vioHn  strings  manu- 
factured in  Germany  to  which  the 
trade-mark  "Eternelle"  is  applied. 
The  agent  registered  the  trade-mark 
under  the  Federal  Statute  and  there- 
after served  notice  through  the  Sec- 
cretary  of  the  Treasury  upon  divers 
collectors  of  customs  (including  that 
official  at  the  Port  of  New  York). 
The  plaintiff  bought  "Eternelle" 
violin  strings  in  Germany  and  sent 
them  to  New  York  but  they  were  re- 
fused entry  on  account  of  defendant's 
trade-mark   and   notice. 

The  plaintiff  brought  action  to 
compel  the  defendant  Schoening  to 
withdraw  his  protest  against  importa- 
tion and  to  compel  the  collector  to 
pass  the  goods.  Motion  for  prelim- 
inary injunction  was  granted  by 
Hough,  D.  J.  On  appeal  decree  was 
affirmed.    Ward,  C.  J.,  said:  — 


"Assuming  that  Congress  coxAd 
protect  the  owner  of  a  registered 
trade-mark  against  the  importation 
by  third  parties  of  the  genuine  article 
under  that  trade-mark,  has  it  done 
so?  We  think  not.  The  act  pro- 
hibits the  entry  of  imported  merchan- 
dise which  shall  "copy  or  simulate"  a 
trade-mark  registered  under  it.  The 
obvious  purpose  is  to  protect  the  pub- 
lic and  to  prevent  any  one  from  im- 
porting goods  identified  by  their 
registered  trade-mark  which  are  not 
genuine.  In  this  case,  however,  the 
imported  goods  were  the  geniune 
article  identified  by  the  trade-mark. 
We  assume  that  Schoening  has  a  vaUd 
trade-mark,  even  if  he  does  not  man- 
ufacture the  strings,  Menendez  v. 
Holt,  128  U.  S.  514,  applying  to  the 
whole  of  the  United  States  and  still 
are  of  opinion  that  it  is  not  infringed 
by  one  who  buys  in  German}^  the 
genuine  article  identified  by  the 
trade-mark,  imports  it  into  the 
United  States  and  sells  it  so  marked 
here." 


468  Registered  Trade-Marks 

This  notice  must  be  affixed  to  the  trade-mark  or  where  that  can- 
not be  done  it  must  be  appHed  to  the  package  or  receptacle  con- 
taining the  article.  Failure  to  do  this  prevents  the  recovery  of 
damages  except  where  the  defendant  was  duly  notified  of  infringe- 
ment, and  continued  the  same.  It  does  not,  however,  render  a  bill 
brought  for  infringement  demurrable,^^  but  merely  prevents  re- 
covery of  damages.^^ 
§  253.  Definitions. 

"  Sec.  29.  That  in  construing  this  act  the  following  rules 
must  be  observed,  except  where  the  contrary  intent  is  plainly 
apparent  from  the  context  thereof:  The  United  States  in- 
cludes and  embraces  all  territory  which  is  under  the  jurisdic- 
tion and  control  of  the  United  States.  The  word  'States' 
includes  and  embraces  the  District  of  Columbia,  the  Terri- 
tories of  the  United  States,  and  such  other  territory  as  shall 
be  under  the  jurisdiction  and  control  of  the  United  States. 
The  terms  'person'  and  'owner/  and  any  other  word  or 
term  used  to  designate  the  applicant  or  other  entitled  to  a 
benefit  or  privilege  or  rendered  liable  under  the  provisions 
of  this  act,  include  a  firm,  corporation,  or  association  as 
well  as  a  natural  person.  The  term  'applicant'  and  'regis- 
trant' embrace  the  successors  and  assigns  of  such  applicant 
or  registrant.  The  term  'trade-mark'  includes  any  mark 
which  is  entitled  to  registration  under  the  terms  of  this  act, 
and  whether  registered  or  not,  and  a  trade-mark  shall  be 
deemed  to  be  'affixed'  to  an  article  when  it  is  placed  in  any 
manner  in  or  upon  either  the  article  itself  or  the  receptacle 
or  package  or  upon  the  envelope  or  other  thing  in,  by,  or 
with  which  the  goods  are  packed  or  inclosed  or  otherwise 
prepared  for  sale  or  distribution." 
§  254.  When  Act  Takes  Effect. 

"  Sec.  30.  That  this  act  shall  be  in  force  and  take  effect 
April  first,  nineteen  hundred  and  five.  All  acts  and  parts  of 
acts  inconsistent  with  this  act  are  hereby  repealed  except 
so  far  as  the  same  may  apply  to  certificates  of  registration 
issued  under  the  act  of  Congress  approved  March  third, 
eighteen  hundred  and  eighty-one,  entitled  'An  act  to 
authorize  the  registration  of  trade-marks  and  protect  the 

82  Heilcman  Brewing   Co.    v.   Inde-  "  Rossman    v.  Gamier,    211    Fed. 

■pendent  Brewing  Co.,  191  Fed.  489.  401. 


When  Act  Takes  Effect  469 

same,'  or  under  the  act  approved  August  fifth,  eighteen 
hundred  and  eighty-two,  entitled  'An  act  relating  to  the 
registration  of  trade-marks.' " 
Approved,  February  20,  1905. 


CHAPTER  XVII 

Disparagement  of  Rivals  and  Their  Goods 

Section  255.  English  procedure  statutes  as  related  to  injunction. 

256.  Did  equity  have  jurisdiction  to  enjoin  libels  prior  to  the  act  of 

1873? 

257.  Summary  of  English  cases. 

258.  Importance  of  this  question  in  United  States. 

259.  Difference  between  trade  libel  and  personal  libel. 

260.  American  cases. 

261.  The  case  of  Kidd  v.  Horry. 

262.  The  General  American  Rule. 

263.  Qualification  of  rule. 

264.  Right  to  restrain  issuing  of  circulars  to  customers  —  case  of 

Emach  v.  Kane. 

265.  Theory  that  threats  of  prosecution  must  be  shown  to  warrant 

issuance  of  injunction. 

266.  Intent  to  intimidate  customers,  not  to  fairly  warn  them,  is  a 

necessary  element  of  this  kind  of  proceeding  to  enjoin. 

267.  Circulars  giving  notice  of  pendency  of  suit  for  unfair  competition 

are  legal. 

268.  Trade  libels  not  hbelous  -per  se. 

269.  Preliminary  injunction  should  issue,  when  the  plaintiff's  right  is 

so  clear  as  to  be  practically,  or  is  actually  (as  by  demurrer), 
conceded. 

270.  False   representations   regarding   a   competitor   which   are   not 

hbelous. 

271.  Statutes  as  to  libels  do  not  oust  equity  of  jurisdiction. 

The  law  relating  to  libel  and  slander  of  goods,  trade  names, 
and  business  credit  is  most  interesting  from  an  historical  stand- 
point, as  well  as  from  the  fact  that  the  decisions  on  the  questions 
involved  are  far  from  unanimous.  Many  of  the  cases  place 
squarely  before  the  court  a  state  of  facts  showing  beyond  a  doubt 
that  one  of  the  parties  to  the  action  is  suffering  continuous  and 
irreparable  damage  to  his  business  or  credit,  by  reason  of  malicious 
misrepresentations  made  by  the  other.  It  should  be,  and  un- 
doubtedly is,  the  impulse  of  a  court  of  equity  in  all  such  cases,  to 
give  quick  relief  to  the  injured  i>arty  by  injunction  against  further 
use  of  the  damaging  words.  This  is  not  often  done,  however,  as 
470 


English  Statutes  as  Related  to  Injunction        471 

the  court  is  at  once  brought  face  to  face  with  the  vcrl  jus  constitu- 
tional provisions  by  which  trial  by  jury  is  required  in  all  cases  of 
libel  and  slander,  and  in  some  instances  the  jury  is  made  the  judge 
of  both  law  and  fact.^  There  are  decisions  both  ways  as  to  the 
jurisdiction  of  equity  to  grant  relief  by  injunction  against  false 
statements  as  to  trade  and  merchandise.  The  problem  in  these 
cases  is  to  uphold  the  rights  of  free  speech  and  free  press,  and  still 
to  prevent  the  fraud,  loss,  and  injustice  which  arise  from  defama- 
tion of  merchandise,  credit,  and  trade. 

The  reputation  and  credit  of  business  men  are,  perhaps,  no 
more  important  and  no  more  valuable,  in  many  instances,  now- 
adays than  fifty  or  a  hundred  years  ago.  But  it  must  not  be 
forgotten  that  the  malicious  and  unscrupulous  competitor  has  at 
his  hand  to-day,  a  hundred  means  of  injuring  his  rival,  where 
formerly  he  had  one.  Half  a  century  ago,  credit  was  not  the  sen- 
sitive thing  that  it  is  to-day,  and  credit  agencies  and  trade  journals 
were  little  known.  Mails  were  slow  and  sending  letters  was  expen- 
sive; advertising  was  in  its  infancy.  To-day,  the  many  news- 
papers, cheap  postal  rates,  cheap  printing,  and  cheap  transporta- 
tion, give  an  unscrupulous  trader  many  swift  ways  of  blasting  his 
rival's  trade  reputation  almost  before  it  is  discovered  that  he  has 
begun  his  nefarious  operations. 

Therefore,  one  studying  the  decisions  dealing  with  this  ques- 
tion should  not  forget  this  change  in  conditions;  and,  while  it  is 
true  equity  does  not  attempt  to  relieve  every  wrong,  it  is  also 
true  that  it  always  does  relieve  wrong,  as  far  as  it  is  possible  for 
the  court  to  do  so.  It  also  adapts  itself  to  new  conditions  when 
it  can  do  so  consistently  with  its  fundamental  principles. 

§  255.  English  Procedure  Statutes  as  Related  to  Injunction.  — 
The  necessity  for  quick  relief  in  such  cases  as  these  has  been 
recognized  and  provided  for  in  England.  The  statutes  of  1854 
and  1873  have  given  to  courts  of  both  law  and  equity  the  right 
to  grant  injunctions  in  cases  of  libel  and  slander,  by  giving  to  the 
chancery  courts  the  power  to  try  libels,  and  to  the  law  courts  the 
power  to  issue  injunctions.  The  Common  Law  Procedure  Act  of 
1854  I'*  enacted  that:  ''In  all  cases  of  breach  of  contract  or  other 
injury,  where  the  party  injured  is  entitled  to  maintain,  and  has 
brought  an  action,  he  may  *  *  *  claim  a  writ  of  injunction 
against  the  repetition  or  continuance  of  such  breach  of  contract 

I  N.  Y.  Const.,  art.  1,  §  8.  i"  17  &  18  Vict.,  chap.  125. 


472         Disparagement  of  Rivals  and  their  Goods 

or  other  injury,"  etc.  —  and  ''in  such  action  judgment  may  be 
given  that  the  writ  of  injunction  do,  or  do  not  issue  as  justice  may 
require;"  and  further  ''the  plaintiff  may  at  any  time  after  the 
commencement  of  his  action,  apply  ex  parte  for  an  injunction." 

This  statute  gave  the  judges  of  the  common-law  courts  the 
power  to  issue  injunctions,  in  the  cases  specified,  to  prevent  a 
repetition  or  a  continuance  of  the  injury  for  which  the  suit  was 
brought.  It  did  not  change  the  powers  of  chancery.  "Although 
the  power  (of  courts  of  common  law  to  issue  injunctions)  had 
existed  since  1854  (by  reason  of  the  Procedure  Act  of  that  year), 
there  is  no  reported  instance  of  its  exercise  by  a  court  of  common 
law  till  Saxhy  v.  Esterbrook  which  was  decided  in  1878."  ^ 

The  Judicature  Act  of  1873  ^  enacted  that  the  High  Court  of 
Justice  should  have  and  exercise  "the  jurisdiction  which,  at  the 
commencement  of  this  act,  was  vested  in  or  capable  of  being 
exercised  by  all  or  any  one  or  more  of  the  judges  in  the  common- 
law  courts,  respectively,  sitting  in  Court  or  in  Chambers,  or  else- 
where, when  acting  as  judges  or  a  judge  in  pursuance  of  any  stat- 
ute, law,  or  custom;  and  all  powers  given  to  any  such  court  or  to 
any  judges  or  judge,  by  any  statute;  and  also  all  ministerial 
powers,  duties,  and  authorities  incident  to  any  and  every  part 
of  the  jurisdiction  so  transferred."  Section  25,  subsection  8, 
Judicature  Act  of  1873,  reads:  "A  mandamus  or  an  injunction 
may  be  granted  or  a  receiver  appointed  by  an  interlocutory  order 
of  the  court  in  all  cases  in  which  it  shall  appear  to  the  court  to  be 
just  or  convenient  that  such  an  order  should  be  made;  and  any 
such  order  may  be  made  either  unconditionally  or  upon  such  terms 
and  conditions  as  the  court  shall  think  just;  and  if  an  injunction 
is  asked,  either  before,  or  at,  or  after  the  hearing  of  any  cause  or 
matter,  to  prevent  any  threatened  or  apprehended  waste  or  tres- 
pass, such  injunction  may  be  granted,  if  the  court  shall  think  fit, 
whether  the  person  against  whom  such  injunction  is  sought  is 
or  is  not  in  possession  under  any  claim  of  title  or  otherwise,"  etc. 

§  256.  Did  Equity  Have  Jurisdiction  to  Enjoin  Libels  Prior 
to  the  Act  of  1873?  —  It  is  probable  that  the  EngHsh  Court  of 
Chancery  had  jurisdiction,  prior  to  both  of  these  acts,  to  forbid 
the  pubUcation  of  false  and  mahcious  statements  regarding  the 
quality  of  merchandise,  methods  of  manufacture,  and  the  Uke  — 

2  Lord    Coleridge    in    Bonnard    v.         ^  35  &  37  vict.  c.  66,  §  16. 
Perryman,  2  Ch.  269-1891. 


English  Statutes  as  Related  to  Injunction       473 

acts  which,  in  brief,  are  usually  referred  to  as  trade  libels.  The 
Court  of  Star  Chamber  granted  injunctions  against  libel. ^  Lord 
Ellenborough  said  in  Du  Bost  v.  Beresford  ^  that  the  exhibiting 
of  a  painting  might  be  enjoined;  in  Burnett  v.  Chetwood,^  the 
translation  of  a  book  from  Latin  to  English  was  forbidden.  In 
Gee  V.  Pritchard,''  Lord  Eldon  prohibited  the  publication  of  copies 
of  letters  from  copies  secretly  taken  before  they  were  returned  to 
the  writer,  and  the  reporter's  note  refers  to  4  Burrow's  2331-1769, 
where  counsel  speak  of  two  unrecorded  cases  holding  the  same 
way,  and  said  (p.  413):  ''The  question  will  be,  whether  this  bill 
has  stated  facts  of  which  the  court  can  take  notice  as  a  case  of 
civil  property."  This  decision  is  approved  by  Judge  Story. ^ 
In  Emperor  of  Austria  v.  Day  and  Kossuth^  a  libel  was  enjoined, 
probably  on  the  ground  of  property  rights.  In  Routh  v.  Webster  ^'^ 
the  defendants  were  restrained  from  publishing  in  a  prospectus 
that  plaintiff  was  trustee  of  a  joint-stock  company,  the  court  here 
probably  acting  on  the  ground  of  plaintiff's  property  rights. 
Doctor  Clark  attempted  to  stop  a  quack  from  selhng  "Sir  James 
Clark's  Consumption  Pills,"  in  Clark  v.  Freeman,^^  but  an  injunc- 
tion was  refused  on  the  ground  that  the  court  could  not  stop  the 
publication  of  a  libel.  In  Seeley  v.  Fisher  ^^  an  injunction  against 
an  advertisement  was  refused  because  no  claim  of  exclusive  prop- 
erty was  made  by  plaintiff. 

In  Donaldson  v.  Beckett  ^^  it  is  stated  that  one  class  of  injunc- 
tions issuing  out  of  chancery  is  "injunctions  for  printing  unpub- 
lished manuscripts  without  license  from  the  author." 

These  cases  are  the  English  cases  on  this  point  prior  to  the 
.decision  of  Malins,  V.  C,  in  1869  in  Dixon  v.  H olden, ^'^  where  he 
said:  "I  beg  to  be  understood  as  laying  down  that  this  court  has 
jurisdiction  to  prevent  the  publication  of  any  letter,  advertise- 
ment, or  other  document,  which,  if  permitted  to  go  on,  would 
have  the  effect  of  destroying  the  property  of  another  person, 
whether  that  consists  of  tangible  or  intangible  property,  whether 
it  consists  of  money  or  reputation." 


^  Hudson's  Star  Chamber. 
*2Campb.  £.11-1810. 
6  2  Merivale,  441-1720,  note. 
'  2  Swanst.  403-1818. 

8  2  Story  Eq.  Jur.  §  948. 

9  3DeG.F.&  J.  217-1861. 


"  10  Beav.  5G1-1847. 

"  11  Beav.  112-1848. 

1=  11  Sim.  581-1841. 

"  2  Brown's  Pari.  Cas.  129-1774. 

i<  L.  R.  7  Eq.  48&-94-1869. 


474         Disparagement  of  Rivals  and  their  Goods 

The  facts  of  this  case  are  stated  by  this  same  vice-chancellor 
in  Thorleifs  Cattle  Food  v.  Massam.^'"  "Mr.  Dixon  was  a  merchant 
of  great  repute  in  Liverpool,  and  he  happened  to  employ  a  solicitor 
of  that  town;  that  solicitor  thought  fit  to  quarrel  with  him  about 
his  bill  of  costs,  or  something  of  that  kind,  and  he  persisted  in 
stating  day  after  day,  in  newspapers  and  placards  over  the  town, 
that  Mr,  Dixon  had  l^een  a  member  of  an  insolvent  firm  which 
had  failed,  and  that  it  was  treated  as  a  fraudulent  firm;  if  that 
were  true  Mr.  Dixon's  character  and  reputation  as  a  merchant 
were  gone."  The  opinion  was  in  part  as  follows:  ''I  am  told  that 
a  court  of  equity  has  no  jurisdiction  in  such  a  case  as  this,  although 
it  is  admitted  it  has  jurisdiction  when  property  is  likely  to  be 
affected.  What  is  property?  One  man  has  property  in  lands, 
another  in  goods,  another  in  a  business,  another  in  skill,  another 
in  reputation;  and  whatever  may  have  the  effect  of  destroying 
property  in  any  one  of  these  things  (even  in  a  man's  good  name) 
is,  in  my  opinion,  destroying  property  of  a  most  valuable  descrip- 
tion. But  here  it  is  distinctly  sworn  to,  and  cannot  be  denied  that 
the  effect  of  this  will  be  seriously  damaging  to  the  plaintiff's  busi- 
ness of  a  merchant.  Now,  the  business  of  a  merchant  is  about 
the  most  valuable  kind  of  property  he  can  well  have.  Here  is  the 
source  of  his  fortune,  and  therefore  to  be  injured  in  his  business 
is  to  be  injured  in  his  property.  But  I  go  further,  and  say  if  it 
had  only  injured  his  reputation,  it  is  within  the  jurisdiction  of 
this  court  to  stop  the  publication  of  a  libel  of  this  description 
which  goes  to  destroy  his  property  or  his  reputation,  which  is  his 
property,  and,  if  possible,  more  valuable  than  other  property" 
(id.  p.  492). 

In  reading  this  case  it  should  be  remembered  that  the  act  of 
1854  did  not  in  any  way  enlarge  the  power  of  the  Chancery  Court 
in  which  this  proceeding  was  brought.  Hence,  this  decision  was 
an  announcement  of  an  enlarged  jurisdiction  of  chancery.  To 
this  proposition  Malins,  V.  C,  clung  consistently  against  much 
opposition,  and  it  now  seems  as  if  his  view  was  to  be  adopted, 
although  in  Mulkern  v.  Ward,^^  and  in  Prudential  Assurance  Co. 
V.  Knott,^'^  Dixon  v.  Holden  was  adversely  criticised. 

In  1873  came  the  Judicature  Act,  which  gave  power  to  the 
Chancery  Court  to  try  libels,  but  a  study  of  the  decisions  rendered 

'^  L.  R.  6  Ch.  Div.  582-87-1877,  'o  L.  R.  13  Eq.  G19-1872. 

11  Ch.  Div.  762-1880.  "  L.  R.  10  Ch.  App.  142-1875. 


Summary  of  English  Cases  475 

subsequent  to  the  act  seems  to  show  that  the  doctrine  developed 
in  a  considerable  degree  spontaneously  regardless  of  this  statute 
both  before  and  after  the  date  of  its  enactment. 

This  review  of  the  English  cases  has  been  given  to  show  that 
the  conception  of  the  powers  of  the  Chancery  Court  has  been  a 
growth  —  a  natural  development  of  the  past  sixty  years,  and 
not  the  result  of  statute. 

Following  the  act  of  1873  came  Thorley's  Cattle  Food  Co.  v. 
Massam,^^  Day  v.  Brownrigg,^^  Hill  v.  Hart  Davies,'^^  and  other 
cases,  all  influenced  in  a  greater  or  less  degree  by  the  act  of  1873. 

§  257.  Summary  of  English  Cases.  —  The  English  cases  of  this 
character  seems  to  warrant  the  following  deductions: 

(1)  Equity  has  jurisdiction  to  protect  business  property  from 
injury  inflicted  by  publication  of  false  statements  —  at  the  same 
time  being  ''keenly  alive  to  the  difficulty,  which  varies  greatly 
with  the  circumstances  of  each  case,  in  framing  an  injunction 
which  will  protect  the  plaintiff  without  unduly  restricting  free 
speech."  The  court  said  in  Collard  v.  Marshall,^^  on  a  motion  for 
interim  injunction  (Chitty,  J.),  that  "The  Court  of  Chancery,  be- 
fore the  Judicature  Act,  had  power  to  intervene  by  injunction  to 
protect  property,  but  not  to  protect  character;  it  had  no  power 
to  try  a  libel.  Since  the  Judicature  Acts,  the  chancery  division 
has,  on  motion,  granted  injunctions  restraining  the  further  pub- 
lication of  false  statements  calculated  to  injure  a  man's  trade. 
See  Thomas  v.  Williams.^^  The  court  always  acts  with  the  great- 
est caution,  and  is  keenly  alive  to  the  difficulty,  which  varies 
greatly  with  the  circumstances  of  each  case,  in  framing  an  injunc- 
tion which  will  protect  the  plaintiff  without  unduly  restricting 
free  speech"  (id.  p.  577).  This  action  was  to  restrain  a  placard, 
which  was  as  follows:  ''A  strike  is  now  on  at  C.  &  C.'s  against 
cheap  labor  and  the  sweating  system  of  contract  work,"  and 
Chitty,  J.,  allowed  a  statement  that  a  strike  against  a  system  of 
contract  labor,  or  the  employment  of  an  undue  proportion  of  boys, 
was  on  at  C.  &  C.'s. 

(2)  Before  the  act  of  1854  equity  could  enjoin  injury  to  prop- 
erty, and  the  jurisdiction  of  chancery  in  that  regard  was  not 
altered  in  any  way  by  that  act. 

i»L.  R.  6  Ch.  Div.  582-1877;  14          ^ol.  R.  21  Ch.  Div.  798-1882. 
Ch.  Div.  762-1880.  ^^  1  Ch.  571-1892,  at  p.  577. 

i«  L.  R.  10  Ch.  Div.  294-1878.  ^2  l.  r.  14  ch.  Div.  864-1880. 


476         Disparagement  of  Rivals  and  their  Goods 

(3)  A  man's  interest  in  the  names  of  his  merchandise,  in  his 
trade  name,  and  in  the  reputation  of  his  business  is  property 
which  a  court  of  equity  will  protect  from  destruction  or  injury. 

The  present  condition  of  the  law  in  England  is  well  summed 
up  by  Mr.  Folkard  in  ''The  Law  of  Libel  and  Slander:"  ^3  ''it 
appears,  therefore,  that  (independently  of  the  statute  cited,  viz. : 
acts  of  1854  and  1873),  both  upon  principle  and  authority,  the 
jurisdiction  rests  on  the  injury  to  property,  such  injury  being 
actual  or  prospective;  but  where  the  injury  complained  of  is  that 
of  defamation  of  character  only,  there  is  no  principle  of  law  nor 
rule  of  equity  conferring  jurisdiction  to  restrain  it  by  injunction. 
If,  however,  the  publication  is,  or  would  be,  if  persisted  in,  in- 
jurious to  property,  or  if  it  amounts  to  a  contempt  of  court,  it 
may  be  restrained  by  interlocutory  injunction;  and  not  the  less 
so  because  it  is  also  libelous." 

That  other  courts  than  the  law  courts  should  have  jurisdiction 
of  libel  and  slander  accords  with  the  history  of  the  law  of  defama- 
tion. In  very  early  times  the  ecclesiastical.  Star  Chamber  and 
seignorial  courts  tried  most  of  these  cases.  At  first  the  law  courts 
had  no  remedy  for  defamation.  ''And  it  is  not  used  in  this  realm 
that  pleas  of  defamation  should  be  pleaded  in  the  King's  Court."  ^^ 

The  early  cases  distinguished  between  spiritual  and  temporal 
defamations.  Most  of  these  cases  dealing  with  defamation  of  a 
person's  livelihood,  office,  or  business,  related  to  callings  connected 
with  the  administration  of  justice;  as  defamation  of  judges  or 
attorneys,  calhng  merchants  bankrupts  and  so  bringing  them 
under  the  bankruptcy  statute.  The  idea  that  damage  to  a  man's 
trade  or  business  was  a  ground  of  action  probably  arose  after  the 
ecclesiastical  courts  lost  their  power,  as  such  a  loss  related  to 
temporal,  nonspiritual  affairs. 

The  Star  Chamber  Court  finally  obtained  large  powers  as  re- 
gards these  cases.  It  drew  its  precedents  not  from  the  common 
law  but  through  the  influence  of  its  ecclesiastical  members  from 
the  civil  law,  and  the  rules  of  law  thus  created  were  first  set  forth 
in  the  case  of  De  Libellis  Famosis^^ 

It  is  said  Scroggs  was  impeached  for  trying  to  introduce  the 
practice  of  enjoining  libels  into  the  Court  of  King's  Bench. '^" 

"  London,  1908,  p.  327.  """Judges    of     England,"     Foss, 

"  Rat.  Pari.  1-133.  Vol.  VII,  p.  170. 

"  5  Coke  125a. 


Importance  of  Question  in  United  States  477 

§  258.  Importance  of  this  Question  in  United  States.  —  It 
must  be  remembered  that  none  of  the  cases  subsequent  to  1873  are 
of  much  value  in  America.  All  cases,  in  other  words,  decided 
after  the  act  of  1873  are  not  in  point  because  of  the  existence  of 
that  act,  which  enlarged  the  jurisdiction  of  English  chancery  and 
so  gave  the  court  powers  which  American  equity  courts  do  not 
possess.  But  it  is  most  important  to  the  American  courts  to 
know  whether  or  not  the  EngHsh  Chancery  Court  had  original 
jurisdiction,  before  the  statutes  to  enjoin  the  utterance  of  trade 
libels;  for  both  American  and  English  equity  courts  are  the  devel- 
opment of  the  old  English  Chancery  Court.  If,  therefore.  Chan- 
cery did  have  the  power  to  issue  such  injunctions,  the  American 
Equity  Court,  which  adopted  the  principles  of  the  English  Chan- 
cery Courts,  is  not  using  one  of  its  most  important  weapons. 

Before  the  Judicature  Acts  the  Court  of  Chancery  undoubtedly 
did  not  claim  to  have  power  to  try  a  libel,  using  that  term  in  its 
usual  legal  sense;  but  that  is  not  the  question  first  to  be  considered. 
Rather  it  must  first  be  decided  if  the  acts  included  in  the  mislead- 
ing term  ''trade  libel"  are  really  libels  at  all. 

§  259.  Difference  Between  Trade  Libel  and  Personal  Libel.  — 
This  question  is  not  now  important  in  England,  as  the  statutes 
referred  to  have  cleared  all  obstacles  out  of  the  way  of  the  court 
and  quick  relief  can  there  be  afforded  in  these  cases  by  injunction; 
but  in  America  the  strict  construction  of  the  term  ''libel"  has 
governed;  and  all  false  statements,  whether  as  to  trade  and  mer- 
chandise or  as  to  character,  are  measured  up  to  the  same  rules  of 
procedure  and  remedy.  Hence  it  is  important  here  in  the  United 
States  to  know  if  there  be  any  distinction  between  character 
libel  and  trade  libel.  If  there  is  such  a  distinction,  it  may  be 
possible  to  secure  relief  by  injunction  in  cases  where,  in  the  past, 
the  suitor  has  been  turned  away  from  an  equity  court,  and  left 
to  seek  relief  against  one  who  is  doing  him  serious  and  constant 
injury  through  an  action  at  law. 

If  there  be  a  difference  between  trade  libel  and  character  libel, 
it  is  to  be  found  in  their  relation  to  personal  rights.  A  hbel  of  a 
man's  personal  reputation  involves  his  good  name.  That  vitally 
concerns  his  standing  among  men,  and  the  repute  of  himself  and 
his  family  in  the  community.  On  the  other  hand,  to  publish  a 
statement  that  the  ejector  device  of  the  rifle  which  he  sells  is 
defective  has  no  such  effect. 


478         Disparagement  of  Rivals  and  their  Goods 

False  statements  as  to  merchandise  or  trade  are  made  for  the 
purpose  of  getting  a  rival's  trade  away  from  him.  They  do  not 
often  involve  any  criticism  of  his  character,  impute  to  him  any 
loathsome  disease,  or  charge  hhii  with  crime,  or  defect  in  character, 
in  the  sense  in  which  such  criticism  could  be  construed  as  libel. 
To  say  something  of  another  falsely  "which  may  impair  or  hurt 
his  trade  or  livelihood,  as  to  call  a  tradesman  a  bankrupt,  a  physi- 
cian a  quack,  or  a  lawyer  a  knave"  -''  is  undoubtedly  libel.  To  so 
speak  of  a  person  is  to  discredit  him  among  his  fellows,  to  deprive 
him  of  his  neighbors'  respect  and  confidence  —  to  brand  him  as 
unfit  to  share  in  the  life  of  those  about  him.  To  say  falsely  that  a 
rival  is  infringing  one's  patent;  that  a  newspaper  is  not  of  a  class 
specified  by  statute  for  publication  of  certain  advertising;  ^^  or 
that  plaintiff's  safes  could  be  easily  opened,  —  -^  is  not  a  libel  in 
the  usual  meaning  of  the  term.  It  is  a  false  and  fraudulent  state- 
ment, made  to  obtain  unfairly  the  business  of  another.  Persons 
who  use  such  words  or  phrases  should  be  enjoined  at  once.  If 
these  words  are  to  be  classed  strictly  as  libels,  special  damages 
must  be  shown  to  have  resulted  from  their  use,  and  it  may  be 
difficult,  if  not  impossible,  to  show  such  damage  except  after  a 
considerable  period.  But  it  is  not  difficult  usually  to  prove  their 
falsity,  and  an  equity  court,  if  convinced  of  the  falsity  of  the  state- 
ments made,  should  put  an  end  to  them  by  injunction. 

Damages  at  law  may  afford  adequate  recompense  and  relief 
for  either  a  single  utterance  of  a  libel  or  for  many  utterances  of  a 
libel  against  character.  Once  a  statement  has  been  made  that  a 
person  is  guilty  of  a  crime,  or  that  a  doctor  is  a  quack,  the  dam- 
age is  done.  The  libeled  person  can  recover  damages;  a  jury  can 
at  once,  or  after  a  lapse  of  two  or  three  years,  put  an  estimate  on 
the  injury  suffered  by  the  false  statement.  The  statement  that  a 
man's  patent  is  invalid,  or  that  the  ejector  of  a  rifle  he  manufac- 
tures is  defective,  made  once  may,  and  probably  would,  cause  a 
damage  which  could  not  easily  be  estimated  accurately,  and 
usually  because  the  damage  would  be  very  slight  from  a  single 
statement  of  that  sort,  but  that  it  might  well  be  very  large  in 
total  cannot  be  denied.    Any  adequate  relief  against  such  state- 

'-'  Blackstone,  Bk.  Ill,  c.  VIII,  §  5.  -'  Victor  Safe   &   Lock  Co.   v.   De- 

^T  Lc   Massena   v.   Storm,   62  App.  right,   147  Fed.  211-1906   (C.  C.  A. 

Div.    (N.    Y.)    150-1901;    70   N.    Y.  8th  Cir.). 

Supp.  882. 


American  Cases  479 

ments  must  put  a  stop  to  them  at  once.  Customers  must  not  be 
continually  frightened  if  lousiness  is  to  prosper. 

This  is  the  reason  for  the  statement  in  22  Cyclopedia  of  Law 
and  Procedure  C'Cyc")  901,  that  ''a  distinction  is  taken  between 
false  statements  made  maliciously  and  those  made  in  good  faith; 
and  this  class  of  cases  holds  that  the  injunction  will  be  granted 
where  malice  or  a  wilful  purpose  to  inflict  injury  is  present." 
See  cases  there  cited. 

The  decision  of  the  Massachusetts  court  that  breach  of  trust 
or  of  contract  is  necessary  to  give  equity  jurisdiction  to  restrain 
"representations  as  to  the  character  and  standing  of  the  plaintiff, 
or  as  to  his  property  (by  a  mercantile  agency) ,  although  such  rep- 
resentation may  be  false,"  ^'''  is  to  the  same  effect. 

Speaking  before  the  Patent  Law  Association,  in  1899,  Mr.  C.  E. 
Pickard  says  -^  as  to  the  value  of  an  action  at  law  against  one 
who  issues  circulars  making  accusations  of  infringement  against 
rivals:  "Of  course  if  he  can  prove  that  the  circulars  in  question 
are  false  and  maliciously  uttered  and  that  he  has  been  actually 
damaged  thereby,  the  manufacturer  may,  by  a  suit  at  law,  recover 
such  damages  as  he  can  prove  he  has  actually  sustained.  *  *  * 
How  difficult  —  how  practically  impossible  —  it  generally  is  to 
prove  such  actual  damages  is  obvious  to  any  to  whose  attention 
the  matter  has  been  brought,  and  need  not  be  discussed  here.  The 
advice  we  are  compelled  to  give  is  that '  the  game  is  not  worth  the 
candle.'  Some  means  should  be  provided  by  which  this  evil  may 
be  checked  at  the  source." 

The  realization  of  the  necessity  of  the  writ  of  injunction  to 
prevent  and  forestall  the  use  of  false  statements  regarding  the 
merchandise  is  becoming  more  general;  and  it  will  be  a  great 
boon  to  honest  business  when  men  are  able  to  use  freely  the 
weapon  of  the  injunction  to  prevent  malicious  attacks  upon  their 
products  by  competitors  who  use  falsehood  as  their  weapon. 

§  260.  American  Cases.  —  An  early  New  York  case  ^^  held 
that,  in  the  absence  of  an  allegation  of  injury  to  plaintiff's  prop- 
erty, a  libel  would  not  be  restrained.  The  motive  in  this  case 
was  malice  and  revenge,  rather  than  trade  rivalry,  and  the  libel 

-^  Raymond  v.  Russell,  143  Mass.  '"  Brandreth  v.  Lance,  8  Paige,  24- 

295-9G-1887;  9  N.  E.  544.  1839. 

2?  Proceedings  of  Assn.,  312-1884- 
1900. 


480 


Disparagement  of  Rivals  and  their  Goods 


was  a  personal,  and  not  a  trade  libel,  but  the  opinion  of  Chan- 
cellor Walworth  is  in  point  here  and  contains  a  summary  of  early 
English  cases  deahng  with  applications  to  enjoin  libels.  In  Singer 
Manufacturing  Co.  v.  Domestic  Sewing  Machine  Co.^^  an  injunc- 
tion was  sought  against  the  publication  of  the  false  statement 
that  defendant's  machine,  instead  of  complainant's,  had  been 
decided  at  a  state  fair  to  be  the  best  domestic  machine.  "  It  is  well 
settled,"  says  the  court  in  this  case,  "that  an  injunction  will  not 
be  granted  to  restrain  slander  or  libel  of  title,  or  of  reputation. ^^ 
Not  that  it  is  not  a  wrong,  not  that  the  wrong  might  not  be  irrep- 
arable, but  simply  because  courts  of  chancery  in  the  exercise 
of  the  extraordinary  powers  lodged  in  them  have  uniformly  re- 
fused to  act  in  such  a  case,  leaving  parties  to  their  remedy  at  law." 
Later,  speaking  of  the  acts  of  the  defendant,  the  court  remarks 
that  they  ''are  calculated  to  injure  the  credit  of  the  complainant's 


31  49  Ga.  70-1873.  The  plaintiff,  a 
manufacturer  of  sewing  machines, 
entered  into  a  competition  before  the 
Georgia  State  Agricultural  Society  for 
a  premium  on  the  best  machine,  and 
secured  the  reward.  The  defendant, 
which  was  also  a  competitor  in  said 
contest,  published  an  article  in  the 
"  Atlanta  Herald,"  stating  that  its  ma- 
chine had  been  decided  and  reported 
by  the  Committee  to  be  the  best 
family  machine. 

The  plaintiff  brought  suit  for  an 
injunction  to  restrain  the  defendant 
from  saying  by  publication  or  other- 
wise that  the  said  Society  did  not 
award  the  first  premiums  to  the  com- 
plainant for  the  best  family  machine, 
and  for  the  best  manufactured  ma- 
chine.   An  injunction  was  denied. 

"The  case  made  by  the  bill  is  one 
of  words  which  are  untrue  in  fact,  and 
which  are  calculated  to  injure  the 
credit  of  the  complainant's  business 
and  advance  the  business  of  the  de- 
fendant. If  a  wrong  capable  of  redress 
before  the  Court  at  all,  it  comes  more 
nearly  within  the  definition  of  a  libel 
or  of  slander  concerning  one's  trade  or 


business  than  anything  else.  Equity, 
it  must  be  remembered,  will  not  en- 
join every  wrong.  There  are  injuries 
by  one  man  to  another  which  no  law 
will  remedy.  Telling  lies,  unless  those 
lies  be  of  a  peculiar  character,  is 
one  of  such  injuries.  But  there  are 
very  many  wrongs,  wrongs  recogniz- 
able and  capable  of  redress  at  law, 
that  yet  are  not  such  wrong  as  a  court 
of  equity  will  enjoin.  Libel  and 
slander,  however  illegal  and  outrageous 
will  not  be  enjoined.     *     *     * 

"  The  principle  is,  that  to  authorize 
the  writ  there  must  be  an  irreparable, 
expected  injury  to  a  property  right. 
It  is  a  perversion  of  language  to  say 
that  the  complainant  has  a  property 
right  in  the  truth  of  the  report.  He 
has,  perhaps,  a  right  to  the  report, 
but  a  perversion  of  the  truth,  a  claim 
that  it  is  different  from  what  it  in  fact 
is,  can  in  no  fair  sense  be  called  an 
infringement  of  his  right  of  property 
in  the  report." 

32  Citing  Martin  v.  Wright,  6  Sim. 
297-1833;  Clark  v.  Freeman,  11  Beav. 
112-1848;  Sceley  v.  Fisher,  11  Sim. 
581-1841. 


American  Cases  481 

business  and  advance  the  business  of  the  defendant.  If  a  wrong 
be  capable  of  redress  before  the  courts  at  all,  it  comes  more  nearly 
within  the  definition  of  a  libel  or  of  slander  concerning  one's  trade 
or  business,  than  anything  else.  Equity,  it  must  be  remembered, 
will  not  enjoin  every  wrong.  There  are  injuries  done  by  one  man 
to  another  which  no  law  will  remedy.  *  *  *  The  principle  is, 
that  to  authorize  the  writ  there  must  be  an  irreparable  injury  to 
a  property  right." 

In  the  same  year  1873,  the  case  of  Boston  Diatite  Co.  v.  Florence 
Manufacturing  Co.^^  was  decided  in  Massachusetts.  Diatite  was 
a  patented  material  used  by  plaintiff  to  make  toilet  mirrors,  etc., 
and  it  was  a  trade-mark  name.  Defendant  made  mirrors  from 
another  substance  of  the  same  nature  not  protected  by  letters 
patent.  Defendant  represented  to  plaintiff's  customers  that  plain- 
tiff was  infringing  patents  of  defendant.  Injunction  was  refused. 
Said  Grey,  C.  J.:  ''The  jurisdiction  of  a  Court  of  Chancery  does 
not  extend  to  cases  of  libel  and  slander,  or  of  false  representation 
as  to  the  character  or  quality  of  the  plaintiff's  property,  or  to  his 
title  thereto  which  involves  no  breach  of  trust  or  of  confidence." 
The  court  cites  Huggonson  Case,^'^  Gee  v.  Pritchard,^^  Seeley  v. 
Fisher,^^  Fleming  v.  Newton,^'^  Emperor  of  Austria  v.  Day  & 
Kossuth, ^^  Mulkern  v.  Ward,^^  and  remarks:  ''The  opinions  of 
Vice-Chancellor  Malins  in  Springhead  Spinning  Co.  v.  Riley, '^^ 
in  Dixon  v.  Holden,'^^  and  Rollins  v.  Hinks,^"^  appear  to  us  to  be  so 
inconsistent  with  these  authorities  and  with  well-settled  prin- 
ciples, that  it  would  be  superfluous  to  consider  whether,  upon  the 
facts  before  him,  his  decisions  can  be  supported.  The  jurisdic- 
tion to  restrain  the  use  of  a  name  or  trade-mark,  or  the  publica- 
tion of  letters,  rests  upon  the  ground  of  the  plaintiff's  property  in 
his  name,  trade-mark,  or  letters,  and  of  the  defendant's  unlawful 
use  thereof."  '^^  Held,  that  there  was  here  "no  trust  or  contract 
between  the  parties  and  no  use  by  the  defendants  of  the  plaintiff's 

33 114  Mass.  69.  '^  L.  R.  13  Eq.  355-1872. 

3"  2  Atk.  469,  488-1742.  "  Citing  Routh  v.  Webster,  10  Beav. 

35  2  Swanst.  403-1818.  561-1847;  Leather  Cloth  Co.  v,  Amer- 

36 11  Sim.  581-1841.  ican  Leather  Co.,  4  De  G.  J.  &  S.  137- 

37 1  H.  L.  Cas.  363-1848.  1863;  affirmed  in  11  H.  L.  Cas.  523- 

38  3  De  G.  F.  &  J.  217-1861.  1865;  Maxwell  v.  Hogg,  L.  R.  2  Ch. 

35  L.  R.  13  Eq.  619-1872.  App.  307-1867;  Gee  v.  Pritchard,  2 

«  L.  R.  6  Eq.  551-1868.  Swanst.  403-1818. 
"  L.  R.  7  Eq.  488-1869. 


482         Disparagement  of  Rivals  and  their  Goods 

name;  but  only  that  the  defendants  made  false  and  fraudulent 
representations,  oral  and  written,  that  the  articles  manufactured 
by  the  plaintiff  were  infringements  of  letters  patent  of  the  defend- 
ant corporation,  *  *  *  and  that  the  defendants  further 
threatened  divers  persons  with  suits,  etc.  *  *  *  jf  ^j^g  plain- 
tiff has  any  remedy,  it  is  by  action  at  law."  ^"^ 

The  foregoing  case  was  followed  in  Whitehead  v.  Kitson,^^  in 
which  it  was  alleged  that  defendant  falsely  represented  to  persons 
likely  to  buy  plaintiff's  patent  that  it  interfered  with  a  patent  of 
defendant,  resulting  in  loss  of  business  to  plaintiff;  and  it  was  held, 
that  the  case  was  not  one  of  equitable  jurisdiction  and  that,  on 
authority  of  Boston  Diatite  Co.  v.  Florence  Manufacturing  Co.,'^^ 
and  Prudential  Assurance  Co.  v.  Knott, ^"^  the  court  had  no  jurisdic- 
tion. 

In  Life  Association  of  Amerim,  v.  Boogher  ^^  the  allegations  of 
the  bill  were  that  Boogher  had  been  engaged  in  the  composition, 
publication,  and  circulation  of  false,  etc.,  statements  respecting 
the  plaintiff  *  *  *  ''for  the  purpose  of  injuring  him,  and 
in  order  to  levy  blackmail  on  the  plaintiff,"  and  that  defendant 
was  insolvent  so  that  a  judgment  against  him  for  damages  would 
be  valueless.  Held,  that  there  was  no  juiisdiction  to  restrain  the 
publication. 

In  M auger  v.  Dick,^^  an  action  to  restrain  defendant  from  in- 
terfering with  plaintiff's  business  by  threats,  circulars,  and  suits, 
Dick  made  and  sold  capsules.  Mauger  left  employ  of  Dick  and 
started  "American  Soft  Capsule  Co."  And  soon  after  Dick 
issued  a  circular  stating  ''certain  parties  are  infringing  our  trade- 
mark rights  by  seeking  to  place  on  the  market  imitations  of  our 
soft  capsules,"  etc.,  and  threatening  to  punish  "any  encroach- 
ments on  our  rights."  Held,  that  "the  jurisdiction  of  a  court  of 
equity  does  not  extend  to  false  representations  as  to  the  char- 
acter or  quality  of  the  plaintiff's  property,  or  to  his  title  thereto, 
when  it  involves  no  breach  of  trust  or  contract,  nor  does  it  extend 
to  cases  of  libel  or  slandw.  Equitable  jurisdiction  to  restrain  the 
use  of  a  name  or  trade-mark,  or  letters,  rests  upon  the  ground 
of  plaintiff's  property  in  his  name,  trade-mark,  or  letters,  and  the 

"  Citing  Barley  v.  Waljord,  9  Q.  B.  ^«  114  Mass.  69-1873. 

197-1846;    Wren   v.    Weikl,   L.   R.   4  "  L.  R.  10  Ch.  App.  142-1875. 

Q.  B.  730-1869.  «  3  Mo.  App.  173-1876. 

''  119  Mass.  484-1876.  «  55  How.  Pr.  132-34-1878. 


The  Case  of  Kidd  v.  Horry  483 

unlawful  use  thereof."  In  contrast  with  the  above  ruling  note 
that  an  injunction  was  issued  in  Croft  v.  Richardson, ^'°  sl  Special 
Term  case,  against  the  publication  of  threats  of  prosecution  for 
infringement,  the  court  inferring  bad  faith  from  the  language  used 
by  defendants;  but  this  case,  especially  since  Marlin  Fire  Arms 
Co.  V.  Shields, ^^  which  appears  to  disapprove  it,  can  hardly  be 
considered  authoritative.  The  decision  stated  that  the  ''plain- 
tiffs claim  *  *  *  that  the  defendants  are  publishing  false 
and  malicious  libels  concerning  plaintiffs'  business  and  their  busi- 
ness character  and  transaction."  This  the  state  courts  have  a 
right  to  restrain.'^-  The  charge  was  to  the  effect  that  plaintiffs 
were  prosecuting  a  business  which  was  an  unlawful  interference 
with  defendants'  rights,  and  were  irresponsible,  and  hoped  to  make 
something  out  of  it  before  legal  proceedings  were  taken,  and  that 
their  efforts  in  that  direction  were  nefarious.  ''This  language  is 
quite  too  excessive  and  ill  chosen  to  convey  simply  information 
that  the  plaintiffs  and  their  patrons  have  no  right  to  make  and 
sell  exhibitors,  and  are  liable  to  defendants  for  so  claiming.  At 
all  events,  I  think  it  quite  safe  to  hold  that  such  language  is  sat- 
isfactory evidence  of  malice  until  the  defendants  commenced  an 
action  in  good  faith,  against  the  plaintiffs  or  other  parties,  to 
vindicate  the  rights  which  the  defendants  claim"  (p.  358). 

§  261.  The  Case  of  Kidd  v.  Horry.  —  In  1886,  appHcation 
was  made  to  the  United  States  Circuit  Court,  Joseph  P.  Bradley 
and  William  McKennon,  Justices,  in  the  case  of  Kidd  v.  Horry, ^^ 
for  an  interlocutory  injunction  against  "circular  letters  which  are 
alleged  to  be  libelous  and  injurious  to  the  patent  rights  and  busi- 
ness of  the  complainants;  and  from  making  or  uttering  libelous 
or  slanderous  statements,  written  or  oral,  of  or  concerning  the 
validity  of  their  letters  patent,"  etc.  The  court  admitted  the 
question  new,  saying:  "*  *  *  The  application  seems  to  be 
altogether  a  novel  one,  and  is  urged  principally  upon  a  line  of 
recent  English  authorities,  such  as  Dixon  v.  Holden,^'^  Thorley^s 
Cattle  Food  Co.  v.  Massam,^^  Thomas  v.  Williams,^^  and  Loog  v. 

80  59  How.  Pr.  356-1880.  Food  Co.  v.  Massam,  L.  R.  14  Ch.  Div. 

"  171  N.  Y.  384-1902;  64  N.  E.  163;     763-1880. 
59  L.  R.  A.  310.  6s  28  Fed.  773-76-1886  (C.  C.  Pa.). 

52  Citing  Snow  v.  Judson,  38  Barb.  "  l.  R.  7  Eq.  488-1869. 

(N.    Y.)    210-1862;    Thorley's    Cattle  "  L.  R.  14  Ch.  Div.  763-1880. 

6«  L.  R.  14  Ch.  Div.  864-1880. 


484         Disparagement  of  Rivals  and  their  Goods 

Bean.^''  An  examination  of  these  and  other  cases  reUed  on  con- 
vinces us  that  they  depend  on  certain  peculiar  acts  of  parliament 
of  Great  Britain,  and  not  on  the  general  principles  of  equity 
jurisprudence"  (id.  p.  774);  and  then  added:  "We  do  not  think 
that  the  existence  of  malice  in  publishing  a  libel,  or  uttering  slan- 
derous words,  can  make  any  difference  in  the  jurisdiction  of  the 
court.  Malice  is  charged  in  almost  every  case  of  hbel,  and  no 
cases  of  authority  can  be  found,  we  think,  independent  of  statute, 
in  which  the  power  to  issue  an  injunction  to  restrain  a  libel  or 
slanderous  words  has  ever  been  maintained,  whether  malice  was 
charged  or  not.  Charges  of  slander  are  peculiarly  adapted  to, 
and  require  trial  by  jury;  and,  exercising  as  we  do,  authority  under 
a  system  of  government  and  law,  which  by  a  fundamental  article 
secures  the  right  of  trial  by  jury  in  all  cases  at  common  law,  and 
which  by  express  statute  declares  that  suits  in  equity  shall  not 
be  sustained  in  any  case  where  a  plain,  adequate,  and  complete 
remedy  may  be  had  at  law,  as  has  always  heretofore  been  con- 
sidered the  case  in  causes  of  libel  and  slander,  we  do  not  think  that 
we  would  be  justified  in  extending  the  remedy  of  injunction  to 
such  cases."  '"^ 

The  English  cases  which  the  court  here  refuses  to  recognize 
as  authority  binding  in  any  way  upon  it,  because  ''An  examina- 
tion of  these  and  other  cases  relied  on  convinces  us  that  they  de- 
pend on  certain  peculiar  acts  of  parliament  of  Great  Britain,  and 
not  on  the  general  principles  of  equity  jurisprudence"  are  Dixon 
V.  Holden,^^  Thorley's  Cattle  Food  Co.  v.  Massam,^'^  Thomas  v. 
Willia7ns,^^  and  Loog  v.  Bean.^'^  It  referred  also  to  Prudential 
Assurance  Co.  v.  Knott,^^  and  Beddow  v.  Beddow.^^  The  date  of 
these  decisions  is  vital  in  considering  their  authority;  for,  if  the 
act  of  1854  did  not  affect  the  jurisdiction  of  Chancery,  and  the 
act  of  1873  did  enlarge  that  jurisdiction,  all  Chancery  cases  before 
1873  are  cases  which  depend  on  the  general  principles  of  equity 
jurisprudence  and  were  authorities  on  which  the  court  in  Kidd  v. 
Horry  should  have  acted.    The  court  seems  to  have  relied  on  cases 

"  L.  R.  26  Ch.  Div.  306-1884.  ^°  L.  R.  14  Ch.  Div.  763-1880. 

^8  Followed    by    Judges    Colt    and  "  L.  R.  14  Ch.  Div.  864-1880. 

Carpenter  in  Massachusetts  &  Balti-  62  l.  r.  26  Ch.  Div.  306-1884. 

more  Car  Wheel  Co.  v.  Bemis,  29  Fed.  "  L.  R.  10  Ch.  App.  142-1875. 

95-1886  (C.  C.  Mass.).  "  L.  R.  9  Ch.  Div.  89-1878. 

^»  L.  R.  7  Eq.  488-1869. 


The  General  American  Rule  485 

decided  after  1873,  with  the  exception  of  Dixon  v.  Holden,  and 
hence  on  cases  which  may  be  presumed  to  have  been  influenced  by 
that  act.  It  does  not  mention  the  cases  decided  before  the  act, 
which  hold  against  the  view  here  adopted  by  the  court.  It  is  to  be 
noted  that  this  was  an  application  for  an  interlocutory  or  interim 
injunction.  No  proof  appears  to  have  been  offered  on  the  applica- 
tion as  to  the  falsity  of  the  alleged  libelous  statements.  This  case 
could  therefore  hardly  be  considered  authority  on  an  application 
at  trial  on  proof  of  falsity  having  been  given.  Moreover,  it  does 
not  decide  what  a  "trade  libel"  is;  it  only  lays  down  the  rule  that 
equity  will  not  enjoin  a  libel  such  as  the  making  of  libelous  and 
injurious  statements  as  to  patents  and  patent  rights.  What  these 
statements  are,  of  course,  we  do  not  know.  This  case  held  also 
that  the  fact  that  the  defendant  acted  with  malice  was  no  ground 
for  granting  an  injunction.  It  is  followed  and  upheld  in  Allegretti 
Chocolate  Cream  Co.  v.  RuheU^ 

§  262.  The  General  American  Rule.  —  The  doctrine  laid 
down  in  Kidd  v.  Horry  must  be  considered  as  the  settled  rule  in 
this  country,  subject  only  to  limited  qualification,  as  indicated 
below.  The  rule,  for  example,  was  strongly  applied  in  Citizens' 
Light,  etc.,  Co.  v.  Montgomery,  etc.,  Co.,^^  in  which  the  court  refused 
to  interfere  with  the  widespread  circulation  of  false  statements 
as  to  credit,  business  standing,  etc.,  and  it  was  held  to  make  no 
difference  that  this  was  by  the  concerted  action  of  several.  The 
rule  was  re-stated  (although  the  case  at  bar  did  not  require  its 
full  application)  in  American  Malting  Co.  v.  Keitel.^"^  The  opinion 
reviews  and  discusses  the  earlier  cases  characterizing  the  cases  in 
which  jurisdiction  to  restrain  libels  has  been  assumed  as  ''those 
which  have  involved  conspiracy,  intimidation  or  coercion."^* 
Other  recent  cases  are  referred  to  in  the  note.^^ 

"  83  III.  App.  558-1898.  found  to  be  a  libel  by  the  verdict  cf 

^^  171  Fed.  553.  a  jury,  where  insolvency  was  shown, 

"  209  Fed.  351.  or  to  avoid  multiplicity  of  suits. 

«8lt  might  be  suggested,  however,  Willis  v.  O'Connell,  231  Fed.  1004 

that  conspiracy,  in  the  sense  of  con-  (D.  C.  Ala.,  1916),  in  which  there  is  a 

certed  action,  would  not  be  enough,  on  full  discussion  of  the  cases  and  an 

the  authority  of  Citizens'  Light,  etc.,  emphatic  assertion  of  the  general  rule, 

Co.  V.  Montgomery,  etc.,  Co.,  supra.  although  the  case  lacked  the  elements 

«^  Wolf  V.  Harris,  184  S.  W.  1139  of  intimidation  or  coercion,  and  was 

(1916);  intimating  that  equity  might  not  a  case  of  trade  competition. 

restrain  the  continuance  of  what  was  The  rule  was  also  appHed  or  stated 


48G         Disparagement  of  Rivals  and  their  Goods 

§  263.  Qualification  of  Rule.  —  If  libel  is  only  incidental, 
however,  to  an  attack  upon  another's  business  by  unjustifiable 
means,  such  as  coercion  or  intimidation,  it  will  not  be  immune 
from  equitable  jurisdiction.  A  course  of  action  may  be  stopped 
by  injunction,  although  it  includes  or  involves  libel.  It  is  true 
that  where  proper  grounds  exist  for  assuming  jurisdiction,  equity 
does  not  refuse  jurisdiction  because  there  is  incidentally  involved 
the  restraining  of  a  libel. ^°  Libel  incidental  to  boycotting,  for 
example,  may  be  enjoined.'^^ 

According  to  the  United  States  Supreme  Court,  *'the  strong 
current  of  authority  is  that  the  publication  and  use  of  letters, 
circulars  and  printed  matter  may  constitute  a  means  whereby  a 
boycott  is  unlawfully  continued.     *     *     *"'^2 

The  making  of  false  statements  about  a  competitor,  and  threat- 
ening injury  to  a  third  person  in  order  to  damage  a  rival's  business 
is  unfair  competition,  and  may  be  restrained  by  injunction. 

In  the  case  of  Davis  v.  New  England  Railway  Pub.  CoJ^  there 
were  several  defendants.  One  of  these  defendants  published  a 
full  hst  of  all  express  companies  in  Boston.  The  other  defendants 
were  competitors  of  the  plaintiff,  and  these  persons  threatened  the 
defendant  Publishing  Company  that  unless  they  refused  to  print 
the  name  of  the  plaintiff,  they  would  refuse  to  co-operate  with 
the  defendant  Publishing  Company  in  giving  data  for  the  direct- 
ory; that  they  would  cut  down  their  advertising  in  such  pubhca- 

in   Montgomery   Ward   Co.   v.   South  panied  by  threats,  express  or  covert, 

Dakota,etc.,Ass'n,150 Fed AV3;Vassar  or  intimidation  or  coercion,  and  the 

College  v.  Loose-Wiles  Biscuit  Co.,  197  accomphshment  of  the  purpose  will 

Fed.  982.  result  in  irreparable  injury  to,   and 

''°  American  Malting  Co.  v.  Keitel,  the   destruction   of,   property   rights. 

209  Fed.  351.  If  all  there  was  to  this  transaction  was 

""^  Beck  V.  Railway  Teamsters'  Protec-  the  pubHcation  of  a  libellous  article, 

live  Union,  118  Mich.  497-1898,  is  a  the  position  would  be  sound.   It  is  only 

prominent  case  in  which  hbel  was  en-  libellous  in  so  far  as  it  is  false.     Its 

joined,  together  with  otlier  acts  con-  purpose  was  not  alone  to  libel  com- 

stituting  a  boycott.     Regarding  the  plainants'  business,  but  to  use  it  for 

objection    that    boycotting    circulars  the  purpose  of  intimidating  and  pre- 

could  not  be  suppressed  by  injunction,  venting  the  public  from  trading  with 

because  this  would  be  to  restrain  the  the  complainants." 

publication  of  a  libel,   it  was  said :  "  Gompers  v.  Buck's  Stove  &  Range 

"But  the  answer  is,  and  always  has  Co.,  221  U.  S.  418,  437. 

been,   that   parties   cannot   interpose  ''^  203  Mass.  470. 
this  defense  when  the  acts  are  accom- 


Qualification  of  Rule  487 

tion,  and  in  other  ways  injure  the  PubHshing  Company's  business. 
As  to  the  character  of  these  acts,  the  court  by  Knowlton,  C.  J., 
says: 

''The  injury  is  to  property,  and  it  is  not  technically  a  Ubel 
upon  the  plaintiff.  The  rule  that  a  court  of  equity  will  not 
enjoin  the  mere  commission  of  a  crime  does  not  apply.  The 
conduct  complained  of  works  a  continuing  and  permanent  in- 
jury to  the  plaintiff's  property.  Upon  proof  of  the  facts  set 
out  in  the  bill,  the  plaintiff  will  be  entitled  to  an  injunction  to 
protect  him  from  the  wrongful  publication.  *  *  *  Upon 
proof  of  these  facts  and  the  other  averments  of  the  bill,  the 
plaintiff  is  entitled  to  an  injunction  against  these  defendants, 
to  prevent  them  from  attempting  to  procure  this  wrongful  kind 
of  publication  in  the  future.  He  has  a  right  to  have  the  other 
defendant  relieved  from  the  temptation  to  continue  the  wrong- 
ful publication,  to  which  their  misstatements  and  threats  might 
subject  it. 

''Their  desire  to  advance  their  own  interests,  in  competition, 
is  not  a  justification  for  attempting  to  interfere  with  the  plain- 
tiff's business  by  misstatements,  and  the  making  of  a  false  and 
misleading  publication."  ^^^ 

An  ahnost  identical  state  of  facts  is  found  in  a  French  case 
relating  to  the  omission  of  plaintiff's  name  from  a  Steamboat 
Directory.'^-''  The  French  courts  declared  such  an  act  to  be 
unfair  competition. 

The  same  rule  has  been  appHed  in  France  to  a  merchant  who 
distributed  copies  of  an  almanac  published  by  the  merchants  of 
the  town  to  his  customers,  but  pasted  together  the  pages  contain- 
ing the  advertisements  of  his  rival.^^ 

Again :  it  is  held  in  France  to  be  unfair  for  a  telephone  company 
to  print  the  advertisements  of  a  competitor  of  the  plaintiff 
after  the  plaintiff's  name  and  out  of  its  regular  order  alpha- 
betically.72« 

^^^  Citing  Carew  v.  Rutherford,  106  Pandectes  Francaises,  tome  20,  p.  71. 
Mass.  1;  Walker  Y.  Cronin,  107  Mass.  ^^f^  Tribunal    Com.    Seine,    9    juin, 

555;  Sherry  v.   Perkins,    147    Mass.  1876,  Rarae,  Besland  et  al.  Anneles 

212;  Vegelahn  v.  Guntner,  167  Mass.  1877,  p.  47. 

92;  Plant  v.  Woods,  176  Mass.  492;         '^^  Paris,    Nov.    20,    1912;    Revue 

Berry  v.  Donovan,  188  Mass.  353.  Trunestrielle    de    Droit    Civil    1913, 

'2''  Rennes,   4   juin,    1883,    cited    in  p.  184. 


488 


Disparagement  of  Rivals  and  their  Goods 


But  the  typical  class  of  cases  in  which  incidental  libel  is  en- 
joined is  that  treated  in  the  following  section,  in  which  charges  of 
infringement  and  threats  of  prosecution  are  made  in  bad  faith 
to  intimidate  a  rival's  customers  and  destroy  his  trade.  Some 
other  cases  in  which  injunctions  have  issued  against  acts  including 
the  element  of  libel,  and  in  which  the  limitations  of  the  general 
rule  are  discussed,  are  referred  to  in  the  note." 

§  264.  Right  to  Restrain  Issuing  of  Circulars  to  Customers  — 
Case  of  Emack  v.  Kane.  —  With  the  case  of  Kidd  v.  Horry 
should  be  compared  Emack  v.  Kane,''^  in  which  Blodgett,  J., 
granted  an  injunction  against  circulars  threatening  prosecution 
for  infringement,  brought  in  bad  faith  to  intimidate  complainant's 
customers  and  destroy  his  business.  There  was  evidence  that 
there  was  no  real  intention  to  sue,  and  defendant  had  discontinued 
suits  formerly  brought,  after  taking  proof. 

truthful,  this  act  would  not  have  been 
wrongful,  but  that  the  false  announce- 
ment not  being  adapted  to  benefit  the 
union,  but  only  to  injure  plaintiff, 
should  be  restrained.    The  Court  said: 


"  In  National  Life  Ins.  Co.  v. 
Myers,  140  111.  App.  392-1908,  a 
violent  blackmailing  attack  upon  the 
reputation  and  business  of  an  in- 
surance company,  by  the  circulation 
of  a  Ubellous  pamphlet,  and  by  pub- 
hshing  other  libellous  matter,  was  met 
by  an  injunction,  the  publications 
complained  of  being  characterized  as 
"more  than  mere  libels."  The  con- 
currence of  the  following  conditions 
was  referred  to  as  taking  the  case  out 
of  the  ordinary  rule  against  restraining 
libel:  1,  the  violation  of  a  valid  con- 
tract; 2,  insolvency  of  defendants  and 
lack  of  adequate  remedy  at  law; 
.3,  irreparable  injury;  4,  malicious 
conspiracy  by  this  and  similar  means 
to  lead  policy  holders  to  allow  policies 
to  lapse,  to  destroy  property  rights  and 
to  ruin  business.  In  M.  Steinert  & 
Sons  Co.  V.  Tagen,  207  Fed.  394-1911, 
an  injunction  was  issued  against  the 
driving  around  of  a  wagon  with  pla- 
cards falsely  announcing  that  "the 
union  teamsters"  were  on  strike  at 
plaintiff's  place,  the  strike  being  in 
fact  a  matter  of  the  past.  It  was  con- 
sidered that  if  the  placards  had  been 


"The  case  does  not  come  within  the 
doctrine  that  equity  will  not  enjoin  the 
pubhcation  of  a  Mbel.  There  is  here  a 
WTongful  act  mahciously  done,  con- 
tinuing and  repeated  day  by  day, 
which,  although  it  is  not  shown  to  have 
caused  as  yet  any  damage  to  the  plain- 
tiff, is  manifestly  intended  to  produce 
that  result,  is  liable  at  any  time  in  the 
future  to  do  so,  and  may  cause  real 
and  substantial  damage  of  which  it 
would  be  certainly  difficult  and  might 
be  impossible  to  prove  either  the 
existence  or  quantum  of  loss." 

In  Gilbert  v.  Mickk,  4  Sandf.  Ch. 
(N.  Y.)  357,  defendant  was  enjoined 
from  posting  in  front  of  complainant's 
place  of  business  a  placard  "Strangers, 
beware  of  mock  auctions,"  since  this, 
although  libelous,  was  also  an  obstruc- 
tion of  complainant's  business,  and  a 
private  nuisance.  See  also  Gilly  v. 
Hirsch,  122  La.  966. 

'^  34  Fed.  46-1888  (C.  C.  lU.). 


Right  to  Restrain  Issuing  of  Circulars  489 

Referring  to  Kidd  v.  Horry,  the  court  says  that  the  principle 
of  that  case,  '' concisely  stated,  is  that  a  court  of  equity  has  no 
jurisdiction  to  restrain  the  pu])lication  of  a  libel  or  slander.  But 
it  seems  to  me  the  case  now  under  consideration  is  fairly  different 
and  distinguishable  from  the  cases  relied  upon  by  the  defendants, 
in  what  seems  to  me  a  material  and  vital  feature.  In  Kidd  v. 
Horry  the  owner  of  a  patent  sought  the  interference  of  a  court  of 
equity  to  restrain  the  defendants  from  publishing  and  putting 
in  circulation  statements  challenging  the  vahdity  of  his  patent 
and  of  his  title  thereto,  on  the  ground  that  such  publications  were 
hbelous  attacks  upon  his  property.  Here  the  complainant  seeks 
to  restrain  the  defendants  from  *  *  *  making  threats  in- 
tended to  intimidate  the  complainant's  customers  under  the  pre- 
text that  the  complainant's  goods  infringe  a  patent  owned  or 
controlled  by  the  defendants,  and  threats  that  if  such  customers 
deal  in  complainant's  goods,  they  will  subject  themselves  to  suit 
for  such  infringement;  the  bill  charging  and  the  proof  showing, 
that  these  charges  of  infringement  are  not  made  in  good  faith,  but 
with  a  malicious  intent  to  injure  and  destroy  the  complainant's 
business.  While  it  may  be  that  the  owner  of  a  patent  cannot 
invoke  the  aid  of  a  court  of  equity  to  prevent  another  person  from 
publishing  statements  denying  the  validity  of  such  patent  by 
circulars  to  the  trade,  or  otherwise,  yet,  if  the  owner  of  a  patent, 
instead  of  resorting  to  the  courts  to  obtain  redress  for  alleged 
infringements  of  his  patent,  threatens  all  who  deal  in  the  goods 
of  a  competitor  with  suits  for  infringement,  thereby  intimidating 
such  customers  from  dealing  with  such  competitor,  and  destroying 
his  competitor's  business,  it  would  seem  to  make  a  widely  different 
case  from  Kidd  v.  Horry,  and  that  such  acts  of  intimidation  should 
fall  within  the  preventive  reach  of  a  court  of  equity.  It  may  not 
be  libelous  for  the  owner  of  a  patent  to  charge  that  an  article 
made  by  another  manufacturer  infringes  his  patent;  and  notice  of 
an  alleged  infringement  may,  if  given  in  good  faith,  be  a  con- 
siderate and  kind  act  on  the  part  of  the  owner  of  the  patent;  but 
the  gravamen  of  this  case  is  the  attempted  intimidation  by  the 
defendants  of  complainant's  customers  by  threatening  them  with 
suits  defendant  did  not  intend  to  prosecute;  and  this  feature  was 
not  involved  in  Kidd  v.  Horry.  I  cannot  believe  that  a  man  is 
remediless  against  persistent  and  continued  attacks  upon  his 
business,  and  property  rights  in  his  business,  such  as  have  been 


490         Disparagement  of  Rivals  and  their  Goods 

perpetrated  in  this  case.  It  shocks  my  sense  of  justice  to  say 
that  a  court  of  equity  cannot  restrain  systematic  and  methodical 
outrages  like  this,  by  one  man  upon  another's  property  rights. 
If  a  court  of  equity  cannot  restrain  an  attack  like  this  upon  a 
man's  business,  then  the  party  is  certainly  remediless,  because  an 
action  at  law  in  most  cases  would  do  no  good,  and  ruin  would  be 
accomplished  before  an  adjudication  would  be  reached.  True,  it 
may  be  said  that  the  injured  party  has  a  remedy  at  law,  but  that 
might  imply  a  multiplicity  of  suits  which  equity  often  interposes 
to  relieve  from ;  but  the  still  more  cogent  reason  seems  to  be  that 
a  court  of  equity  can,  by  its  writ  of  injunction,  restrain  a  wrong- 
doer, and  thus  prevent  injuries  which  could  not  be  fully  redressed 
by  a  verdict  and  judgment  for  damages  at  law.  Redress  for  a 
mere  personal  slander  or  lil3el  may  perhaps  properly  be  left  to  the 
courts  of  law,  because  no  falsehood,  however  gross  and  malicious, 
can  wholly  destroy  a  man's  reputation  with  those  who  know  him; 
but  statements  and  charges  intended  to  frighten  away  a  man's 
customers,  and  intimidate  them  from  deahng  with  him,  may 
wholly  break  up  and  ruin  him  financially,  with  no  adequate 
remedy  if  a  court  of  equity  cannot  afford  protection  by  its  re- 
straining writ." 

Here  again  may  be  seen  acts  which  do  not  constitute  charges 
against  the  person  of  the  plaintiff,  but  rather  acts  which  injured 
the  plaintiff's  business.  It  is  hardly  a  libel  against  a  person's 
character  to  charge  that  he  has  infringed  a  patent;  yet  making 
such  a  charge  may  cause  great  damage  to  the  one  against  whom 
the  charge  is  directed. 

Ide  V.  Ball  Engine  Co?^  is  to  the  same  effect  as  Emack  v. 
Kane,  but  in  Marlin  Fire  Arms  Co.  v.  Shields,''^  the  court  said  of 
the  Emack  case:  "A  very  careful  examination  of  it  leads  to  the 
conclusion  that  its  attempt  to  overthrow  the  reasoning  of  Mr. 
Justice  Bradley  was  not  successful."  In  International  Tooth 
Crown  Co.  v.  Carmichael "  Jenkins,  J.,  disapproves  of  Emack 
V.  Kane  on  the  authority  of  Francis  v.  Flinn.''^ 

Francis  v.  Flinn  "^^  was  a  case  in  which  the  complainant,  owner 
of  a  pilot  boat,  alleged  that  the  respondents  confederated  to 
destroy  his  business  by  pubhcations  in  a  newspaper,  by  instituting 

"  31  Fed.  901.  "  44  Fed.  350. 

^6 171  N.  Y.  384-95-1902;  64  N.  E.         ^^  118  U.  S.  385. 
163;  59  L.  R.  A.  310.  "  118  U.  S.  385. 


Threats  of  Prosecution  Must  be  Shown  491 

suits,  seeking  injunctions,  etc.,  and  the  court  dismissed  the  bill 
on  demurrer  for  want  of  equity. 

Shoemaker  v.  South  Bend  Spark  Arrester  Co.,^°  follows  Emack 
V.  Kane,  and  holds  that  the  court  has  power  to  enjoin  interference 
with  property  rights  in  patents  by  false  and  malicious  claims  of 
title,  threats  to  collect  royalties  from  plaintiff's  customers,  etc. 
This  case  is  often  cited  in  connection  with  Casey  v.  Cincinnati 
Typographical  Union,^^  in  which  a  newspaper  was  enjoined  from 
publishing  boycott  notices,  and  Warren  Featherbone  Co.  v.  Lan- 
dauer,^^  and  Commercial  Acetylene  Co.  v.  Avery  Portable  L.  Co.^^ 
On  the  other  hand,  in  Marx  &  H.  J.  Clothing  Co.  v.  Watson,^"^ 
the  court  refused  to  restrain  the  publication  of  circulars  issued 
to  boycott  the  business  of  individuals,  no  matter  how  unjustifiable 
and  injurious  the  publication  may  be.  In  Allegretti  Chocolate 
Cream  Co.  v.  Rubel,^-'  the  court  refuses  to  follow  Emack  v.  Kane, 
supra,  because  in  that  case  intimidation  by  defendants  of  plain- 
tiff's customers  was  by  threats  of  suit,  which  defendants  did  not 
intend  to  prosecute,  and  there  was  no  such  allegation  in  the 
Allegretti  case.  This  was  on  appeal  from  an  order  granting  a 
preliminary  injunction  against  a  circular. 

§  265.  Theory  that  Threats  of  Prosecution  Must  be  Shown  to 
"Warrant  Issuance  of  Injunction.  —  In  the  cases  in  which  the 
doctrine  of  Emack  v.  Kane  has  been  followed,  threats  have  been 
made  and  widely  disseminated,  to  prosecute  customers  of  the 
plaintiff  for  infringement,  it  being  shown  that  the  threats  were 
made  with  fraudulent  intent  to  break  up  plaintiff's  business,  and 
it  would  seem  that  the  court  has  regarded  the  proof  of  such  threats 
as  necessary  to  the  right  to  demand  an  injunction  under  this 
doctrine. 

The  jurisdiction  of  equity  in  these  cases  is  negatively  de- 
fined in  Edison  v.  Thomas  A.  Edison,  Jr.,  etc.,  Co.^^  thus:  ''The  case 

80 135  Ind.  471-1893;  35  N.  E.  280;  The    facts    were    these:    Defendant 
22L.  R.  A.  332.  made   and  sold   "Wizard   Ink   Tab- 
s'45  Fed.  135-1891  (C.  C.  Ohio);  lets"  and  a  device  called  a  "Magno- 
12  L.  R.  A.  193,  note.  Electric  Vitalizer,"  and  complainant 
82 151  Fed.  133-1903  (C.  C.  Wis.).  alleged  that  through  the  name  adopted 
83 152  Fed.  645-1906  (C.  C.  Wis.).  by  the  defendant,  the  names  given  to 
8«  168  Mo.  133-1901;  67  S.  W.  391;  its  goods,  and  the  form  of  its  advertise- 
56  L.  R.  A.  951.  ments,  it  was  misleading  the  public 
85  83  111.  App.  558-1898.  into  supposing  that  its  worthless  de- 
86 128  Fed.  957-1904  (C.  C.  Del.),  vices  were  the  invention  of  complain- 


492         Disparagement  of  Rivals  and  their  Goods 

now  in  hand,  being  one  merely  of  libel  or  defamation  of  business 
reputation,  unaccompanied  by  threats,  intimidation  or  coercion, 
or  by  any  direct  attack  upon  property  or  conduct  of  business,  or 
by  any  direct  or  indirect  creation  of  liability  on  the  part  of  the 
complainant,  is  not  within  the  equitable  jurisdiction  of  this  court." 
Where  circulars  were  distributed  stating  that  the  goods  of  the 
plaintiff  infringed  a  patent,  and  threatened  all  persons  purchasing 
complainant's  goods  with  suit,  and  defendant  instituted  a  collusive 
and  fraudulent  suit  and  obtained  in  it  a  decree  apparently  sup- 
porting his  patent,  the  court  enjoined  the  use  of  this  decree  to 
injury  of  complainant.  "Complainant  has  no  adequate  remedy 
at  law.  *  *  *  ii  cannot  be  said  that  it  should  lie  by  and  wait 
the  slow  and  uncertain  processes  of  a  suit  for  damages  for  its 
redress.  *  *  *  The  complainant  is  rightfully  operating  under 
such  patent,  and  it  has  no  remedy  adequate  for  the  fraud  and 
wrong  perpetrated  upon  it,  except  as  aided  by  a  court  of 
equity."  ^^ 

Flint  owned  patents  for  a  smoke-preventing  device.  Plain- 
tiffs alleged  that  they  were  trying  to  sell  the  device  to  the  M 
Company,  and  that  defendant  maliciously  served  notice  on  the 
M  Company  that  plaintiff's  device  infringed  patents  owned  by 
defendant,  and  that  if  the  M  Company  used  plaintiff's  device, 
it  would  be  liable  for  costs  and  damages.  Plaintiffs  also  averred 
that  defendant  served  a  like  notice  on  others;  that  plaintiffs  were 
financially  responsible,  and  that  they  believed  defendant  did  not 
intend  to  sue  them,  or  their  customers,  but  intended  to  continue 
the  false  notices.  Injunction  was  refused,  and  Black,  J.,  said 
(p.  501):  "We  live  under  a  written  constitution  which  declares 
that  the  right  of  trial  by  jury  shall  remain  inviolate;  and  the  ques- 
tion of  libel  or  no  libel,  slander  or  no  slander,  is  one  for  the  jury 
to  determine.  Such  was  certainly  the  settled  law  when  the  various 
constitutions  of  this  state  were  adopted,  and  it  is  all-important 
that  the  right  thus  guarded  should  not  be  disturbed.    It  goes  hand 

ant,  and  thus  injuring  his  reputation  D'Alene  Mining  Co.  v.  Miners  Union, 

and  his  business  as  an  inventor.    This  51  Fed.  260;  New  York  Filter  Co.  v. 

was  treated  as  a  species  of  trade  libel  Schwarzwalder,  58  Fed.  579. 

that  would  not  be  restrained.    See  also  ^'' Grand    Rapids    School    Furniture 

these  cases  in  which  Emack  v.  Kane  Co.   v.   Hancy  School  Furniture   Co., 

has   been   cited:  Kelley   v.    Ypsilanti  92    Mich.    558-64-1892;    52    N.    W. 

Dress  Stay   Co.,   44   Fed.   23;   Coeur  1009;  16  L.  R.  A.  721. 


Intent  to  Intimidate  Customers  493 

in  hand  with  the  Hberty  of  the  press  and  free  speech.  For  un- 
bridled use  of  the  tongue  or  pen  the  law  furnishes  a  remedy.  In 
view  of  these  considerations  a  court  of  equity  has  no  power  to 
restrain  a  slander  or  libel,  and  it  can  make  no  difference  whether 
the  words  are  spoken  of  a  person  or  his  property."  The  court 
then  held  that  the  element  of  ''unfair  competition  which  results 
in  the  loss  of  business,  owing  to  the  dread  men  have  of  law  suits," 
will  not  give  equity  jurisdiction,  because  libel  and  slander  are 
generally  accompanied  with  loss  of  business.  No  mention  is  made 
of  Emack  v.  Kane,  although  it  would  seem  in  point  and  was  cited 
in  appellant's  brief.^^ 

This  case  may  be  distinguished  from  those  holding  that  an 
injunction  is  warranted  against  libel  and  slander,  in  that  there 
is  no  continuing  wrong  here,  no  irreparable  injury  the  damage 
from  which  it  is  impossible  to  assess.  An  action  at  law  might  give 
damages  that  would  compensate  the  loss  of  the  plaintiff,  but  there 
are  many  cases  where  the  loss  cannot  be  estimated. 

§  266.  Intent  to  Intimidate  Customers,  Not  to  Fairly  Warn 
Them,  is  a  Necessary  Element  of  this  Kind  of  Proceeding  to 
Enjoin.  —  The  circumstances  attending  an  issue  of  circulars 
threatening  litigation  should,  to  warrant  interference,  indicate 
bad  faith.  ''The  question  whether  the  patent  owner  is  acting  in 
good  faith  in  advertising  his  claims  to  the  manufacturer's  cus- 
tomers by  circulars  or  letters,  can  seldom  be  determined  from  the 
contents  of  the  communication  alone,  and,  like  all  questions  of 
intent,  must  generally  be  determined  by  the  extrinsic  facts."  ^' 
For  instance,  the  National  Harrow  Company  sent  out  numerous 
circulars  and  letters  claiming  the  Adriance  Company  were  in- 
fringing their  patents,  and  threatening  with  suit  all  dealers  selling 
the  Adriance  harrow.  The  lower  court  held  that  all  statements 
in  said  circulars  and  letters  were  true,  and  declined  to  enjoin  them. 
The  court  said:  "When  the  manufacturer  is  financially  respon- 
sible, is  accessible,  and  his  infringements  readily  provable,  and 
when  the  patent  owner  is  financially  able,  and  is  one  who  makes 
it  his  sole  business  to  grant  licenses,  and  is  under  a  duty  to  his 
licensees  to  prosecute  extensive  infringers,  the  sending  of  such 

88  Flint  V.  Hutchinson  Smoke  Burner  Harrow   Co.,    121    Fed.   827-30-1903 

Co.,  110  Mo.  492-1892;  19  S.  W.  804;  (C.  C.  A.  2d  Cir.);  58  C.  C.  A.  163; 

16  L.  R.  A.  243.  49  L.  R.  A.  755. 

*"  Adriance,  Piatt  &  Co.  v.  National 


494         Disparagement  of  Rivals  and  their  Goods 

circulars  to  customers  would  seem  to  be  merely  a  preliminary  or 
cumulative  measure,  and  the  bringing  of  an  infringement  action 
the  paramount  and  imperative  proceeding.  As,  ordinarily,  the 
patent  owner  would  be  prompt  and  zealous  to  assert  his  claims,  if 
he  halts  and  purposely  procrastinates  and  attempts  to  effect  by 
threats  and  manifestoes,  that  which  he  can  compel  by  the  strong 
hand  of  the  law,  a  strong  inference  arises  that  he  has  not  any  real 
confidence  in  his  pretensions.  This  inference  becomes  irresistible 
if  he  refuses  to  bring  suit  during  a  considerable  period  of  time 
when  the  alleged  infringement  is  open,  notorious  and  defiant, 
and  so  extensive  as  to  threaten  destruction  to  his  alleged  exclusive 
rights.  The  indicia  of  bad  faith  are  persuasive  in  the  present 
case.  It  is  impossible  to  read  the  communications  warning  com- 
plainant's customers  against  selling  its  harrows,  with  which  the 
defendant  seems  to  have  flooded  the  country,  without  being  led 
to  believe  that  they  were  inspired  by  a  purpose  to  intimidate  the 
complainant's  customers,  and  coerce  the  complainant,  by  injuring 
its  business,  into  becoming  a  licensee  of  the  defendant.  In  view 
of  its  failure  to  bring  an  infringement  action,  under  circumstances 
which  made  an  action  practically  compulsory,  the  defendant 
cannot  shelter  itself  behind  the  theory  that  the  circulars  were 
merely  legitimate  notices  of  its  rights.  We  are  satisfied  that  they 
w^re  sent,  not  for  the  purpose  of  self-protection,  but  in  execution 
of  the  defendant's  threat  to  stop  the  complainant  from  building 
harrows  by  other  means  than  legal  remedies." 

Hovey  v.  Rubber  Tip  Pencil  Co.^'^  points  out  the  same  distinction, 
and  holds  that  circulars  threatening  litigation  cannot  be  interfered 
with,  unless  bad  faith  be  shown. 

It  is,  of  course,  possible  that  such  circulars  may  be  distributed 
in  good  faith  to  warn  against  infringement,  and  in  doing  so  com- 
mit no  wrong.  It  is  the  fraud  that  gives  the  right  to  an  injunction. 
Bad  faith,  the  intent  to  destroy  the  business  of  another,  and  hence 
danger  to  property  rights,  are  the  grounds  given  by  the  Circuit 
Court  of  Appeals  on  which  equity  may  interfere.  An  equity 
court  will  not  enjoin  a  person  from  asserting  his  beUef  that  he 
owns  title  to  property.  WTiere  the  record  does  not  make  it  clear 
that  statements  made  by  defendant  are  either  mahcious  or  false, 
equity  will  not  act."    A  circular  of  warning  and  stating  that  suit 

»^  57  N.  Y.  110-1874.  '^  Everett  Piano  Co.  el  al.  v.  George 

P.  Bent,  60  111.  App.  372-1895. 


Intent  to  Intimidate  Customers  495 

had  been  started,  which  has  been  adjudged  to  be  proper,  is  found 
at  151  Fed.  134. 

If  the  circular  is  issued  in  bad  faith,  which  fact  is  shown  by- 
neglect  to  bring  suit,  it  may  be  enjoined.^-  If  the  complainant's 
bill  be  true,  it  has  an  undoubted  right  to  warn  the  public 
against  the  infringement  of  its  trade-mark;  that  question  should 
not  be  determined  on  the  mere  allegations  of  the  parties  ^^  (id.  p. 
135). 

"Where  notices  are  given  or  circulars  distributed  in  good  faith 
to  warn  against  infringement,  no  wrong  whatever  is  committed; 
but  where,  as  is  here  averred,  they  are  not  made  or  issued  with 
such  intent,  but  in  bad  faith,  and  solely  for  the  purpose  of  destroy- 
ing the  business  of  another,  a  very  different  case  is  presented. 
In  such  a  case  property  rights  are  fraudulently  assailed,  and  a 
court  of  chancery,  whose  interposition  is  invoked  for  their  pro- 
tection, should  not  refuse  to  accord  it."  ^* 

It  is  interesting  to  note  that  the  position  taken  by  the  Circuit 
Court  of  Appeals  in  this  Farquhar  case  is  the  same  position  taken 
by  the  English  courts  in  cases  which  were  not  considered  authority 
in  Kidd  v.  Horry,  supra,  viz.,  that  a  man's  trade  reputation 
and  the  reputation  of  his  goods  is  property  which  equity  must 
protect. 

32  Warren  Featherstone  Co.  v.  Lan-  year;     misleading     statements     and 

dauer,    151    Fed.    130-1903    (C.    C.  threats).     In  the  first  of  these  cases 

Wis.).  (171    Fed.   633)    it   was   said:    "Un- 

8'  Adriance,  Piatt  &  Co.  v.  National  doubtedly,  one  claiming  that  his 
Harrow  Co.,  121  Fed.  827-1903  (C.  patent  is  being  infringed  should  take 
C.  A.  2d  Cir.);  58  C.  C.  A.  163;  and  steps  to  advise  the  pubUc  of  his  rights 
A.  B.  Farquhar  Co.  v.  Same,  102  Fed.  as  provided  by  statute;  provided,  how- 
714-1900  (C.  C.  A.  3d  Cir.) ;  42  C.  ever,  that  if  it  is  made  to  appear  that 
C.  A.  600;  49  L.  R.  A.  755.  The  fol-  under  pretense  of  so  doing  he  is  pur- 
lowing  are  more  recent  cases  in  which  suing  a  course  which  is  calculated  to 
threats  of  prosecution  have  been  held  unnecessarily  injure  another's  busi- 
not  to  be  justified  by  good  faith,  and  ness,  and  with  the  plain  intention  of 
have  therefore  been  stopped  by  injunc-  so  doing,  his  conduct  will  be  deemed 
tion:  Paper  Goods  Co.  v.  Dittgen,  171  malicious,  and  he  brings  himself  within 
Fed.  631  (C.  C.  A.  7th  Cir.);  Electric  the  rule  of  law  obtaining  in  cases  of 
Renovator  Mfg.  Co.  v.  Vacuum  Cleaner  unfair  competition  in  trade,  and  sub- 
Co.,  189  Fed.  754  (two  years'  delay  in  ject  to  injunction." 
prosecuting  suit  evidence  of  bad  faith) ;  ^^  A  B.  Farquhar  Co.  v.  National 
Atlas  Underwear  Co.  v.  Cooper  Under-  Harrow  Co.,  102  Fed.  714-15-1900 
wear  Co.,  210  Fed.  347  (no  suit  for  a '  (C.  C.  A.  3d  Cir.);  42  C.  C.  A.  600. 


496 


Disparagement  of  Rivals  and  their  Goods 


§  267.  Circulars  Giving  Notice  of  Pendency  of  Suit  for  Un- 
fair Competition  Are  Legal.  —  A  complainant,  in  a  suit  for  un- 
fair competition,  may  issue  circulars  to  the  trade  to  give  notice 
of  the  pendency  of  the  suit  and  of  the  claims  made  by  him  where 
he  acts  in  good  faith  and  hmits  the  claims  to  the  allegations  of  the 
bill.  The  issuance  of  such  circulars  will  not  be  enjoined  in  advance 
of  hearing,  upon  a  mere  denial  of  the  allegations  of  the  bill.^^ 

§  268.  Trade  Libels  Not  Libelous  Per  Se.  —  Trade  libels  are 
not  libelous  per  se.  The  damage  must  be  alleged  and  proved  in 
these  cases.^*'  Special  damage  not  being  alleged,  it  is  not  action- 
able to  say  that  goods  manufactured  by  a  rival  dealer  are  "bad" 
or  ''inferior."  To  be  actionable  per  se,  the  words  used  in  such  a 
case  should  import  that  the  dealer  in  question  is  guilty  of  deceit 
or  fraud  in  manufacturing  or  vending  the  goods."  "Words  re- 
lating to  quality  of  articles  made,  produced,  furnished  or  sold  — 
though  false  and  malicious  —  are  not  actionable  without  special 
damage."  ^^    An  action  based  on  a  statement  that  the  "Wall 


95  Warren  Featherbone  Co.  v.  Lan- 
dauer,  151  Fed.  130-1903  (C.  C.  Wis.). 
To  same  general  effect,  see  United 
Electric  Co.  v.  Creamery  P.  M.  Co., 
203  Fed.  53;  Clip  Bar  Mfg.  Co.  v. 
Steel  P.  P.  Co.,  209  Fed.  874  (aff'd 
213  Fed.  233  (C.  C.  A.  3d  Cir.);  suit 
to  determine  right  had  in  this  case 
actually  been  brought).  See  also 
cases  under  §  261,  supra. 

^  For  a  case  in  which  damages  were 
sought  and  recovered,  for  misrep- 
resentations (as  well  as  for  threats  and 
for  the  malicious  prosecution  of  a 
civil  suit)  see  Virtue  v.  Creamery 
P.  M.  Co.,  123  Minn.  17  (verdict, 
however,  set  aside  as  awarding 
excessive  damages  on  insufficient  ev- 
idence) . 

"  Tobias  v.  Harland,  4  Wend.  (X. 
Y.)  537-1830. 

^^Dooling  v.  Budget  Pub.  Co.,  144 
Mass.  258-1887;  10  X.  E.  809.  See 
also  Marlin  Fire  Arms  Co.  v.  Shields, 
171  X.Y.  384-1902;64  N.  E.  163;59  L. 
R.  A.  310.  White  v.  Mellin,  L.  R.  1895, 


A.  C.  154.  Defendant  (White)  sold 
plaintiff's  "MeUin's  Infants'  Food" 
affixing  to  the  wrapper  a  label  stating 
that  defendant's  "food  for  infants  and 
invalids"  was  "far  more  nutritious  and 
healthful  than  anj''  other  preparation." 
The  House  of  Lords  held  that  an  ac- 
tion would  not  lie  for  a  false  statement 
disparaging  a  trader's  goods  where  no 
special  damage  was  proved. 

Lord  Watson  said: 

"The  wTong  complained  of  being  the 
slander  of  goods,  the  fact  that  the 
representations  made  by  the  defend- 
ant in  the  label  already  referred  to 
might  be  calculated  to  disparage  the 
food  manufactured  by  the  plaintiff  and 
to  interfere  with  its  sale  can  afford  no 
cause  of  action.  Every  extravagant 
phrase  used  by  a  tradesman  in  com- 
mendation of  his  o\vn  goods  may  be 
an  implied  disparagement  of  the  goods 
of  all  others  in  the  same  trade;  it  may 
attract  customers  to  him  and  diminish 
the  business  of  others  who  sell  as  good 
and  even  better  articles  at  the  same 


Trade  Libels  Not  Libelous  Per  Se 


497 


Street  Journal"  was  not  a  newspaper,  within  the  meaning  of  a 
certain  statute;  ^^  that  A  had  not  sold  B  any  first-class  goods,  hence 
customers  could  not  get  that  quality  from  B;  ^  that  plaintiff's 
safe  could  be  easily  opened,^  are  cases  in  which  damages  must  be 
alleged  and  proved. 

But  for  the  defendant  to  say  of  the  plaintiff,  an  ice  machine 
maker,  to  a  customer  from  whom  both  were  seeking  an  order, 
that  the  plaintiff  would  be  unable  to  fulfill  the  contract,  was  a 
second-hand  dealer,  and  did  inferior  labor,  was  a  ''scab"  estab- 
lishment, and  had  no  mechanic  in  its  employ,  is  libelous  per  se;  ^ 

Defendant,  a  manufacturer  of  hosiery, 
published  in  the  papers  a  caution  to 
the  pubhc  not  to  form  an  opinion  of 
its  hosiery  from  goods  advertised  by 
plaintiff  as  of  "first  quaUty,"  since 
they  had  been  sold  to  him  as  "dam- 
aged." Held,  that  the  words  were  not 
fairly  to  be  construed  as  imputing 
fraud  to  plaintiff,  and  were  not  libelous 
per  se. 

2  Victor  Safe  &  Lock  Co.  v.  Deright, 
147  Fed.  211-1906  (C.  C.  A.  8th  Cir.). 
Defendant,  a  dealer  in  safes,  wrote  to 
a  person  doing  business  with  plaintiff, 
a  manufacturer  of  safes,  charging  that 
plaintiff's  safes  were  strongly  con- 
structed but  could  easily  be  opened. 
Held,  on  demurrer,  that  as  no  special 
damage  was  alleged,  no  action  for 
libel  lay.  The  language  used  was  con- 
strued as  merely  in  disparagement  of 
the  quality  of  plaintiff's  goods,  and  not 
as  necessarily  casting  a  damaging 
imputation  upon  the  plaintiff  in  re- 
spect of  its  trade  (in  which  case  no 
special  damage  need  have  been  al- 
leged). 

^  Pennsylvania  Iron  Works  Co.  v. 
Henry  Voght  Machine  Co.,  29  Ky. 
L.  Rep.  861-1906;  96  S.  W.  551;  8 
L.  R.  A.  N.  S.  1023;  Hughes  v.  Samuels 
Bros.,  159  N.  W.  589  (Iowa  Supreme 
Court,  Oct.  17,  1916).  The  plaintiff 
and  defendant  were  engaged  in  the 
undertaking  business  in  Storm  Lake, 


price;  but  that  is  a  disparagement  of 
which  the  law  takes  no  cognizance.  In 
order  to  constitute  disparagement 
which  is,  in  the  sense  of  law,  injurious, 
it  must  be  shown  that  the  defendant's 
representations  were  made  of  and 
concerning  the  plaintiff's  goods;  that 
they  were  in  disparagement  of  his 
goods  and  untrue;  and  that  they  have 
occasioned  special  damage  to  the 
plaintiff.  Unless  each  and  all  of  these 
three  things  be  established,  it  must  be 
held  that  the  defendant  has  acted 
within  his  rights  and  that  the  plaintiff 
has  not  suffered  any  legal  injuria." 

"^Le  Massena  v.  Storm,  62  App. 
Div.  (N.  Y.)  150-1901;  70  N.  Y. 
Supp.  882.  Plaintiff  was  the  adver- 
tising agent  of  the  "Wall  Street 
Journal,"  for  which  he  solicited  the 
publication  of  legal  notices,  under  a 
contract  by  which  he  shared  in  the 
profits  of  the  business.  Defendant 
represented  to  persons  from  whom 
plaintiff  solicited  advertisements  that^ 
the  "Wall  Street  Journal"  was  not 
such  a  newspaper  as  the  statute  con- 
templated for  the  insertion  of  legal 
notices.  Held,  that  as  to  plaintiff 
such  a  statement  was  not  actionable 
per  se,  and  that  plaintiff  could  re- 
cover for  loss  of  business  only  by 
pleading  and  proving  special  damage. 

1  Boynton    v.    Shaw    Stocking    Co., 
146  Mass.  219-1888;  15  N.  E.  507. 


498 


Disparagement  of  Rivals  and  their  Goods 


and  where  words  used  are  libelous  per  se  no  injunction  ought  to 
issue.  There  is  no  continuing  damage.  For  each  statement  of 
that  sort  made  by  the  defendant  a  substantial  amount  of  dam- 
ages might  be  collected.  Such  a  case  differs  materially  from  the 
cases  where  continued  publication  of  statements,  none  of  which 
alone  could  be  shown  to  have  caused  serious  damage,  was,  never- 
theless, wrecking  the  plaintiff's  business.  Such  a  case  was  Marlin 
v.  Shields."^  The  Marlin  Company  manufactured  rifles.  Shields 
conducted  ''Recreation,"  a  magazine.  The  Marlin  Company 
withdrew  its  advertising  from  said  magazine,  after  defendant 
advanced  his  rates.  Defendant  then  published  letters,  purporting 
to  be  from  correspondents,  reflecting  on  the  Marlin  rifle.  These 
letters  were  shams,  written  by  the  defendant  himself,  to  force  the 
plaintiff  to  advertise  with  liim,  or  faihng  in  that  'Ho  gratify  his 
malice."    In  defense,  it  was  said  that  the  "complaint  contains 


Iowa.  The  complaint  stated  that  de- 
fendants falsely  and  maliciously  pub- 
lished concerning  the  plaintiff  a  card 
as  follows,  "Bear  in  mind  our  Under- 
taking Department,  satisfaction  guar- 
anteed. [Signed.]  H.  L.  Hughes" 
and  caused  the  same  to  be  sent  to  a 
citizen  of  Storm  Lake  by  mail  at  a 
time  when  his  wife  was  critically  ill  in 
an  hospital,  for  the  purpose  of  injuring 
the  plaintiff  business.  The  plaintiff 
sought  to  recover  damages  on  the 
ground  that  SHch  action  was  libelous. 
The  defendant  demurred.  On  appeal 
the  court  reversed  the  court  below 
which  had  sustained  the  demurrer. 
Gay  nor,  J.,  said: 

"It  appears  that  Cattermole's  wife 
was  sick  unto  death  at  the  time  this 
card  was  composed  by  defendants  and 
sent  to  him.  The  defendants  knew 
this  fact  at  the  time  they  composed 
and  mailed  the  card.  We  take  judicial 
notice  of  the  fact  that  the  city  in  which 
the  parties  resided  was  not  so  populous 
that  the  active  business  men  of  the 
city  were  not  known  to  each  other  and 
to  the  general  pubhc.  The  card  was 
so  framed  and  mailed  by  the  defend- 


ants as  to  lead  the  receiver  to  believe 
that  the  plaintiff  had  composed  and 
mailed  it,  and  this  was  their  purpose 
in  maihng  it.  What  possible  reason 
could  they  have  in  preparing  and  pub- 
lishing this  card?  Was  it  to  help  a 
rival?  Was  it  to  exploit  the  business 
of  a  rival?  Was  it  intended  as  a  letter 
of  credit,  to  the  public,  by  and  through 
which  he  would  be  better  installed  in 
its  confidence  and  esteem?  Is  this  the 
usual  and  ordinary  course  of  procedure 
on  the  part  of  rival  business  firms? 
With  the  largest  charity,  we  cannot 
think  this  was  the  purpose  of  the  pub- 
lication. What,  then,  was  the  purpose 
in  the  minds  of  these  defendants  when 
they  composed  and  sent  these  cards 
to  the  sick  and  dying  in  that  com- 
munity? Was  it  not  rather,  as  the 
petition  says,  to  deprive  him  of  public 
confidence  and  esteem?  Was  it  not 
rather  to  expose  him  to  public  con- 
tempt and  ridicule?  Was  it  not  rather 
to  divert  business  through  this  means, 
from  the  plaintiff,  and  to  injure  him 
by  such  diversion?" 

■  171   N.  Y.  304-1902;   64  N.  E. 
163. 


Trade  Libels  Not  Libelous  Per  Se  499 

no  allegation  of  any  statement  made  against  the  character  or 
conduct  of  the  plaintiff."  The  defendant  criticised  not  the  plain- 
tiff, but  its  gun.  In  Tobias  v.  Harland,^  the  court  (p.  309),  "holds 
that  when  words  are  spoken  not  of  the  trade,  or  manufacturer, 
but  of  the  quality  of  the  article  he  makes  or  deals  in,  to  render 
them  actionable  per  se,  they  must  import  that  the  plaintiff  is 
guilty  of  deceit  or  malpractice  in  making  or  vending  them."  The 
plaintiff  was  unable  to  say  to  what  extent  it  was  damaged  by  said 
publications  and  there  was  no  allegation  of  special  damage.  The 
court  then  cites  Le  Massena  v.  Storm,^  Kennedy  v.  Press  Pub.  Co.,'' 
and  Dooling  v.  Budget  Publishing  Co.,^  to  show,  in  the  words  of 
the  Dooling  case,  that  ''words  relating  merely  to  the  quality  of 
the  articles  made,  produced,  furnished,  or  sold  by  a  person,  though 
false  and  malicious,  are  not  actionable  without  special  damage." 
The  Marhn  Company  asked  the  injunction  (1)  "to  avoid  multi- 
plicity of  actions,  (2)  because  of  the  impossibility  of  ascertaining, 
identifying  or  establishing  according  to  legal  principles,  any 
measure  of  damage."  The  court  in  addressing  itself  to  the  ques- 
tion "whether  equity,  which  creates  neither  rights  nor  liabilities, 
has  heretofore  assumed  jurisdiction  to  restrain  the  publication  of 
criticisms  unjustly  affecting  the  merits  of  articles  of  property 
belonging  to  a  plaintiff  when  such  publication  will  not  support  an 
action  at  law,"  ^  refused  to  grant  an  injunction  and  left  the  plain- 
tiff to  his  action  for  damages. 

This  decision  then  meant  that  equity  could  not  enjoin  a  news- 
paper that  published  false  and  sham  letters  describing  alleged  de- 
fects the  writer  knew  did  not  exist  in  goods,  on  the  ground  that 
equity  cannot  try  a  libel.  It  is  difficult  to  agree  with  the  reasoning 
of  this  decision.  Just  how  the  freedom  of  the  press  is  seriously 
endangered  by  restraining  a  malicious  person  from  publishing 
untrue  statements  as  coming  from  persons  who  as  a  matter  of  fact 
never  existed,  to  the  effect  that  an  ejector  is  faulty,  is  difficult  to 

M  Wend.  (N.  Y.)  537-1830.  1873;  Mauger  v.  Dick,  55  How.  Pr. 

«62  App.  Div.  (N.  Y.)  150-1901;  132-1878;  Kiddv.  Horry,  28  Fed.  77'S- 

70  N.  Y.  Supp.  882.  1886  (C.  C.  Pa.) ;  Baltimore  Car  Wheel 

'  41  Hun  (N.  Y.),  422-1886.  Co.  v.  Bemis,  29  Fed.  95-1886  (C.  C. 

8 144  Mass.  258-1887;  10  N.  E.  809.  Mass.);  Mayer  v.  Journeymen  Storie- 

^Brandreth  v.  Lance,  8  Paige  (N.  cutters'  Assn.,  47  N.  J.  Eq.  519-1890; 

Y.),   24-1839;    Eden   Injunction    (3d  20  Atl.  492;  Fronas  v.  FZmn,  118  U.  S. 

ed.),  p.  372;  Singer  Mfg.  Co.  v.  Do-  385-1886;  30  L.  ed.  165;  6  Sup.  Ct. 

mestic  Sewing  Machine  Co.,  49  Ga.  70-  1172. 


500         Disparagement  of  Rivals  and  their  Goods 

see.  This  case  was  admittedly  a  libel  of  goods.  Furthermore, 
the  fundamental  reason  for  the  trial  by  jury  was  waived  by  the 
defendant  himself,  for  by  his  demurrer  he  admitted  that  his 
statements  were  false  and  untrue.  The  court  ignored  what,  it  is 
believed,  will  eventually  be  the  basis  on  which  equity  will  give 
relief  in  similar  cases  in  the  future,  viz.,  the  fact  that  the  good 
repute  of  merchandise  is  property  and  that  there  is  a  difference 
between  libehng  a  person  and  telling  falsehoods  about  his  goods. 
The  reputation  of  the  Marhn  rifle  for  having  an  effective  ejector 
is  property,  is  valuable;  and,  for  an  equity  court  to  sit  by  and  see 
the  reputation  of  that  article  injured  by  statements  of  the  char- 
acter of  those  disclosed  here  and  which  the  defendant  himself 
admitted  to  be  untrue,  is  to  take  a  narrow  view  of  the  powers  of 
equity  which  its  history  and  functions  do  not  warrant.  In  consid- 
ering the  value  of  this  decision  it  is  significant  that  in  1904,  two 
years  later,  subsection  8  of  section  364  of  the  Penal  Code  of 
New  York  was  enacted,  which  is  aimed  to  relieve  against  all 
sorts  of  hbels  of  the  character  of  that  uttered  by  Shields,  by 
making  them  misdemeanors.  A  digest  of  the  law  is  given  in  the 
note.i" 

§  269.  Preliminary  Injunction  Should  Issue,  When  the  Plain- 
tiff's Right  is  so  Clear  as  to  be  Practically,  or  is  Actually  (as  by 
Demurrer)  Conceded.  —  On  the  question  of  the  right  of  the 
English  court  to  grant  an  injunction,  on  an  interim  or  interloc- 
utory apphcation,  presumably  under  the  Judiciary  Acts,  it  was 
said  in  Coulson  &  Sons  v.  Coulson  &  Co.:  ^^  ''To  justify  the  court 
in  granting  an  interim  injunction,  it  must  come  to  a  decision  upon 
the  question  of  libel  or  no  Ubel,  before  the  jury  have  decided 
whether  it  is  a  hbel  or  not.  Therefore  the  jurisdiction  is  of  a 
dehcate  nature.  It  ought  only  to  be  exercised  in  the  clearest 
cases,  where  any  jury  would  say  that  the  matter  complained  of  was 

'"  Section  421  of  the  Penal  Code,  or  other  pubhcation,  an  advertisement 

Chap.  569,  Laws  of  New  York,  1915.  regarding  merchandise  which  contains 

As  this  section  now  exists  it  provides,  any  assertion  that  it  is  untrue,  de- 

in  substance,  that  if  any  person,  with  ccptive,  or  misleading,  shall  be  guilty 

intent  to  sell  or  dispose  of  merchan-  of  a  misdemeanor,  punishable  by  a 

dise,  directly  or  indirectly,  to  the  pub-  fine  of  not  less  than   S25  nor  more 

lie,  or  with  intent  to  increase  the  con-  than  SI 00,  or   by  imprisonment  for 

sumption  thereof,  knowingly  causes,  not  more  than  one  year,  or  by  both 

directly  or  indirectly,  to  be  made  or  such  fine  and  imprisonment, 
published  in  a  newspaper,  magazine,  "  3  Times  L.  R.  846-1887. 


Representations  False  but  Not  Libelous  501 

libelous,  and  where,  if  the  jury  did  not  so  find,  the  court  would  set 
aside  the  verdict  as  unreasonable."  Such  cases  are  rare,  of  course 
but  they  occur.  Again  in  Warren  Featherbone  Co.  v.  Landauer,^^  it 
was  said  that  ''if  the  defendant,  who  applied  for  an  injunction  to 
restrain  plaintiff  from  issuing  circulars  stating  this  action  had 
been  begun,  came  with  an  adjudication  in  another  court  upon  the 
validity  of  the  complainant's  trade-mark,  we  might  follow  that 
without  proof  and  grant  an  injunction;  but  *  *  *  there  has 
never  been  an  adjudication  of  the  question.  Such  relief  has  been 
granted  in  several  cases,  sometimes  on  the  application  of  the  de- 
fendant, though  more  generally  upon  the  appUcation  of  the  com- 
plainant, and  upon  final  hearing"  ^^  (p.  133). 

Where  an  insurance  agent  who  left  plaintiff's  employ  uttered 
untrue  and  damaging  statements  to  the  effect  that  plaintiff  was 
about  to  abandon  a  part  of  its  business,  the  court  said:  "It  is 
urged  that  the  injury  is  a  continuing  one,  for  which  there  is  no 
accurate  measure  of  damages,  and,  therefore,  is  within  the  prov- 
ince of  equity.  But  even  in  that  class  of  cases  the  complainant's 
right  must  be  so  clear  as  to  be  practically  conceded,  or  it  must 
first  be  established  by  the  verdict  of  a  jury."  "  Publication  of  a 
newspaper  article  to  the  effect  that  a  hotel  is  about  to  be  sold  for 
use  as  a  club,  when  that  is  not  the  fact,  is  a  good  cause  of  action 
at  law  as  a  libel.  ^^ 

§  270.  False  Representations  Regarding  a  Competitor  which 
are  not  Libelous.  —  There  are  many  statements  which  it  is  possible 
for  a  trader  to  make  up  regarding  his  rival  or  his  rival's  product 
or  business  which  are  not  libelous,  and  yet  the  uttering  or  publish- 
ing of  which  will  have  the  effect  of  interfering  unfairly  with  his 
rival's  business.  There  are  also  statements  which  may  be  made 
regarding  one's  own  goods  in  the  nature  of  ''puffs"  which  in- 
cidentally bring  the  goods  of  a  competitor  into  disrepute.  State- 
ments of  the  first  sort  are  actionable :  Those  of  the  second  are  not 
actionable.    To  cause  it  to  become  known,  that  a  competitor  is 

'M51     Fed.     131-1903     (C.     C.  3d  Cir.);  42  C.  C.  A.  600;  49  L.  R.  A. 

Wis.).  755. 

1^  Citing  Emack  v.  Kane,  34  Fed.  "  Baltimore  Life  Insurance  Co.  v. 

46-1888  (C.  C.  111.);  Adriance,  Piatt  Gleisner,    202    Pa.    St.    386-88-1902; 

&  Co.  V.  National  Harrow  Co.,   121  51  Atl.  1024. 

Fed.   827-1903   (C.   C.  A.  2d  Cir.);  ^' A.  D.  Wright  v.  J.  C.  Coules,  4 

58  C.  C.  A.  163;  A.  B.  Farquhar  Co.  Cal.  App.  343-1906. 
V.  Same,  102  Fed.  714-1906  (C.  C.  A. 


502         Disparagement  of  Rivals  and  their  Goods 

about  to  retire  from  business,  or  is  about  to  change  the  location 
of  his  store,  or  that  some  official  connected  with  his  business  is  to 
retire,  or  to  make  statements  of  a  similar  character,  may  seriously 
injure  a  nval  business.  Such  statements  may  be  made  honestly 
or  dishonestly.  If  made  honestly  they  are  mere  gossip,  if  dis- 
honestly, they  are  actionable  as  unfair  competition. 

A  case  of  this  character  arose  in  England  by  reason  of  a  county 
paper  publishing  the  fact  that  a  certain  boiler  making  concern 
which  had  done  business  for  a  long  time  in  the  neighborhood  had 
ceased  to  exist.  The  action  was  treated  in  the  pleadings  as  a 
libel.  The  case  was  tried  on  the  theory  that  it  was  not  a  libel  but 
was  a  false  statement  purposely  made,  which  was  intended  to  and 
did  injure  the  plaintiff.  At  the  trial  there  was  no  proof  of  special 
damages,  but  of  general  loss  of  business.  No  proof  of  any  particu- 
lar customer  lost  to  the  plaintiff  by  reason  of  the  defendant's 
acts  was  produced.  The  court  held  that  proof  of  general  damages 
was  sufficient.    Bowen,  L.  J.,  saying: 

"To  refuse  with  reference  to  such  a  subject-matter  to 
admit  such  general  evidence  would  be  to  misunderstand  and 
warp  the  meaning  of  old  expressions;  to  depart  from,  and  not 
to  follow,  old  rules;  and,  in  addition  to  all  this,  would  involve 
an  absolute  denial  of  justice  and  of  redress  for  the  very  mis- 
chief which  was  intended  to  be  committed.  It  may  be  added 
that,  so  far  as  the  decision  in  Riding  v.  Smith  (1  Ex.  D.  91) 
can  be  justified,  it  must  be  justified  on  the  ground  that  the 
court  (rightly  or  wrongly)  believed  the  circumstances  under 
which  the  falsehood  was  uttered  to  have  brought  it  within 
the  scope  of  a  similar  principle." ^^'^ 

In  a  CaHfornia  case  the  defendant  caused  to  be  published  of  a 
hotel  owned  by  the  defendants  the  following  statement: 

"The  famous  Hotel  Arcadia  at  Santa  Monica  has  been 
purchased  by  the  Occidental  Club  and  will  be  remodeled  into 
a  colossal  country  club  house,  the  largest  in  the  world,  for  the 
use  of  the  members  and  their  families. 

"The  new  owners  will  proceed  at  once  to  enter  upon  the 
privileges  of  the  spacious  quarters  they  have  acquired  by 
the  sea. 

"They  do  not  take  possession  until  the  close  of  the  present 
season,  but  a  series  of  balls,  planned  to  occur  twice  a  week, 
""  Raldiffe  v.  Evans,  C.  A.  1892,  2  Q.  B.  525-533. 


Representations  False  but  Not  Libelous  503 

will  soon  commence.  In  the  meantime,  extensive  alterations 
and  repairs  will  go  on  without  interruption." 

The  court  held,  on  demurrer,  that  by  reason  of  this  statement 
certain  persons  who  were  about  to  come  to  plaintiff's  >iotel  to 
stay,  were  dissuaded  from  patronizing  the  hotel,  and  that  the 
cause  of  action  was  stated.  ^^'' 

In  a  Massachusetts  case,  it  was  shown  that  one  of  the  defend- 
ants published  a  directory  which  purported  to  give  a  full  list  of  all 
reputable  concerns  in  Boston  doing  an  express  business,  failed  to 
publish  the  plaintiff's  name  and  that  it  had  omitted  this  name  as 
a  direct  result  of  the  efforts  of  other  defendants  who  were  com- 
petitors of  plaintiff.    The  Court  held  that 

"An  intentional  act  of  this  kind,  without  excuse,  is  a 
violation  of  his  (plaintiff's)  legal  rights.     *     *     * 

"The  injury  is  to  property,  and  it  is  not  technically  a 
libel  upon  the  plaintiff."'^" 

In  Helmore  v.  Smith  ^^'^  the  father  of  the  plaintiff,  and  one 
Smith,  had  been  engaged  in  the  coal  business  in  London  prior  to 
1886.  A  partnership  accounting  action  was  afterwards  brought, 
and  a  reference  was  ordered.  The  court  having  ordered  that  the 
business  be  continued  until  an  appeal  could  be  heard,  ap- 
pointed the  defendant  a  receiver.  The  plaintiff  was  a  clerk  in 
the  employ  of  the  firm,  who  had  been  dismissed  by  the  receiver. 
He  then  set  up  in  business  as  a  coal  merchant  on  his  own  account, 
and  at  once  sent  out  circulars  to  the  customers  of  the  firm,  stating 
that  in  consequence  of  his  dismissal  he  had  started  business  on  his 
own  account  and  was  soliciting  their  trade.  Later  he  sent  out 
another  circular,  which  read  as  follows: 

"Sir,  —  I  beg  to  enclose  you  report  of  the  above  case  from 
the  Times  of  Nov.  9,  1886.  The  Defendant,  Charles  Smith, 
is  appealing  from  such  judgment,  and  pending  the  hearing 
of  such  appeal  has  been  appointed  receiver  on  giving  ade- 
quate security. 

"As  your  esteemed  orders  have  for  the  most  part  come 
under  my  personal  supervision  while  manager  to  the  firms  of 

^^^  Wright  v.  Coules,  4  Cal.  App.  umj  Pub.  Co.,  203  Mass.  470-479- 
343-345-1906.  1909. 

^^' Davis    V.    A'eu;    England    Rail-  ^^"^  Helmore  v.  Smith,  C.  A.   1886, 

35  Ch.  Div.  449. 


504         Disparagement  of  Rivals  and  their  Goods 

Helmore  &  Smith  and  Charles  Smith  &  Co.,  I  beg  to  submit 
to  your  notice  my  present  prices,  and  to  inform  you  that 
should  you  favour  me  with  any  orders  they  will  receive  the 
same  attention  and  care  as  formerly. 

''Thanking  you  in  anticipation,  I  am  yours  obediently, 

"Henry  W.  Helmore." 

The  report  to  which  he  refers  was  a  report  of  a  hearing  of  a  case 
before  the  Vice-Chancellor  in  Chancery.  He  was  asked  by  the 
Justice  in  Chancery  hearing  the  case,  to  give  an  undertaking  to 
desist  from  issuing  further  circulars  calculating  to  draw  the  trade 
of  the  firm.  He  refused.  The  court  then  ordered  him  "to  be 
committed  to  prison,  but  give  him  three  days  before  the  order  is 
enforced,  to  see  whether  he  will  give  an  undertaking  in  the  terms 
of  the  notice  of  motion."  An  appeal  was  taken  to  the  Court  of 
Appeals,  where  this  order  was  sustained.  Lord  Cotton.  L.  J., 
saying: 

"My  decision  does  not  turn  on  this  fact,  but  it  must  not 
be  supposed  that  I  do  not  strongly  disapprove  of  such  con- 
duct. It  was  said  that  there  was  a  general  custom  among 
persons  engaged  in  the  coal  trade  to  act  in  this  manner.  If 
that  be  so,  all  I  can  say  is  that  the  sooner  they  act  as  honour- 
able men  the  better.     *    *    * 

"No  fair  competition  would  justify  the  act  of  the  appellant 
in  sending  round  a  copy  of  the  report  in  the  Times,  which, 
if  taken  alone,  would  lead  the  customers  to  think  that  the 
business  was  in  a  failing  state  or  would  shortly  fail." 

The  above  cited  cases  indicate  clearly  that  there  are  many 
injurious  statements  continually  circulated  in  trade  not  consti- 
tuting libel  or  slander  which  under  our  present  rules  may  be 
the  basis  of  actions  brought  in  equity  for  injunction  as  well  as  at 
law  for  damages,  and,  as  pointed  out  by  Judge  Cotton  in  the 
passage  above  referred  to,  constitute  unfair  competition. 

§  271.  Statutes  as  to  Libels  Do  Not  Oust  Equity  of  Jurisdic- 
tion. —  The  fact  that  there  exists,  as  in  New  York,  a  penal  stat- 
ute forbidding  acts  which  constitute  trade  libel,  is  not  an  excuse 
for  the  failure  of  a  court  of  equity  to  enjoin  such  acts.  If  a  tres- 
passer begins  to  tear  down  a  building,  the  fact  that  a  statute 
exists  forbidding  malicious  mischief,  or  that  the  owner  has  an 
action  for  trespass,  is  no  reason  for  an  equity  court  refusing  to 


Libel  Statutes  Do  Not  Oust  Equity  of  Jurisdiction    505 

enjoin  such  an  act.  When  an  irreparable  and  continuing  unlawful 
injury  is  threatened  to  private  property  and  business  rights, 
equity  will  generally  enjoin  on  behalf  of  the  person  whose  rights 
are  to  be  invaded,  even  though  an  indictment  on  behalf  of  the 
public  will  also  lie.^^ 

Mr.  Robert  P.  Cla::>p,  in  a  valuable  note  on  this  subject  in 
23  Am.  Law  Reg.  N.  S.  707-14-1884,  says:  "The  greater  protec- 
tion afforded  by  the  English  courts  is  demanded  by  a  just  regard 
for  the  vastness  and  variety  of  our  commercial  interests.  Our 
jurisprudence  must  in  some  way  meet  this  demand."  If  that 
statement  was  true  in  1884,  it  is  many  times  more  so  now.^^ 

To  summarize.  English  courts  are  now  granting  injunctions 
against  many  forms  of  trade  libel  under  the  powers  granted  by 
the  act  of  1873.  The  act  does  not  give  a  complainant  such  relief  as 
a  matter  of  right;  for  granting  the  writ  is  always  in  the  discretion 
of  the  court.  It  has  generally  been  considered  and  stated  by 
courts  here  and,  it  must  be  said,  in  most  instances  without  fully 
understanding  the  authority  of  the  English  cases,  so  far  as  can 
be  judged  from  the  opinions  rendered,  that  equity  cannot  enjoin 
or  try  a  Hbel  of  goods  or  business,  a  trade  libel.  Because  of  this 
apparent  obstacle,  the  American  courts  admit  they  are  powerless 
to  give  relief  in  many  cases  where  they  themselves  consider  relief 
ought  to  be  granted.  As  a  commentary  on  this  condition,  it  is 
interesting  to  note  some  of  the  publications  and  utterances  which 
have  recently  been  enjoined  in  England:  —  trade  letters  imputing 
that  plaintiff's  goods  were  spurious,  it  being  held  unnecessary 
to  show  special  damage;  ^^  stating  in  a  paper  called  "Money 
Maker"  that  plaintiff's  bank  was  in  Htigation;  ^^  unauthorized 
use  of  man's  name  where  such  use  injured  his  property  and  busi- 
ness.^°  In  Punch  v.  Boyd  -^  an  action  was  brought  for  £10,000 
damage  for  libel.  The  plaintiff  had  built  an  expensive  plant  to 
make  butter  firkins  by  machinery  instead  of  by  hand.  The  butter 
merchants   of   Limerick   posted   placards   reading:   "Notice   to 

i«  Toledo,  etc.,  Ry.  Co.  v.  Pemisyl-  i-  London    &    Northern    Bank    v. 

vania  Co.,  54  Fed.  730-1893  (C.  C.  Newnes,  16  Times  L.  R.  76-1899. 

Ohio);  19  L.  R.  A.  387.  ^°  Dockrcll    v.    Dougall,    80    L.    T. 

"See  also  note  in  4  Cent.  L.  Jour.  N.  S.  556-1899;  Hawker  v.  Stourfield 

171,  which  is  a  plea  for  interference  Park   Hotel   Co.,    Wkly.    Notes,    51- 

by  injunction  in  cases  of  trade  libel.  1900. 

18  Thomas  v.  Williams,  L.  R.  14  Ch.  ^'  L.    R.   Ir.    16  Q.   B.   Div.  476- 

Div.  864-1880.  1885. 


506        Disparagement  of  Rivals  and  their  Goods 

Farmers"  and  stating  that  they  would  refuse  to  purchase  butter 
packed  in  machine-made  firkins  "as  we  find  them  to  be  more 
injurious  to  keeping  the  (luality  of  the  butter,"  etc.,  and  an  inter- 
locutory injunction  was  granted  because  a  verdict  of  a  jury  would 
not  afford  adequate  compensation.  The  court  interfered  "to 
prevent  injury  to  the  plaintiffs  by  the  publications  complained 
of  until  the  defendants  shall  have  established  their  defense." 
The  injunction  was  granted  on  affidavits.  Commenting  on  the 
position  taken  by  the  American  courts  in  cases  of  trade  Hbel 
Professor  Roscoe  Pound  said: 

"In  substance,  the  traditional  doctrine  puts  anyone's  busi- 
ness at  the  mercy  of  any  insolvent  malicious  defamer  who  has 
sufficient  imagination  to  lay  out  a  skilful  campaign  of  extortion. 
So  long  as  denial  of  relief  in  such  cases  rests  on  no  stronger 
basis  than  authority,  our  courts  are  sure  to  find  a  way  out."  ^^ 

2^^  "  Equitable    Relief   Against  Def-      amation  and  Injuries  to  Personality," 

29  Harv.  Law  Rep.  G40-1916. 


CHAPTER  XVIII 
Unfair  Competition  in  the  Use  of  Literary  Property 

Section  272.  Copyright. 

273.  Publication. 

274.  Trade-mark  rights  arising  in  connection  with  Hterary  property. 

275.  Analogy  between  actions  for  unfair  competition  and  infringement 

of  copyright. 

276.  The  doctrine  of  unfair  competition  as  applied  to  literary  property. 

277.  Unfair  competition  in  connection  with  books  and  book  titles. 

278.  Unfair  competition  in  connection  with  plays  and  play  titles. 

279.  Names  of  newspapers  and  magazines. 

280.  Comic  strips. 

281.  Use  of  an  author's  name. 

282.  Jurisdiction. 

Under  the  early  English  common  law,  the  right  of  an  author 
in  his  literary  works  was  in  the  nature  of  a  monopoly,  which  ex- 
tended to  his  printed  as  well  as  his  unpublished  compositions.  This 
right,  however,  was  not  so  clearly  defined  by  the  courts  as  to  form 
a  basis  for  proper  protection,  and  it  became  expedient  to  remedy 
this  defect  by  statutory  action.  Accordingly,  in  the  eighth  year 
of  Anne,  the  first  copyright  act  was  passed  by  Parliament.  The 
purpose  of  that  act  was  to  afford  protection  to  authors  for  a  limited 
period  after  the  publication  of  their  works.  In  the  Htigation 
following  its  enactment  the  House  of  Lords  held  that  the  common- 
law  right  of  an  author  in  his  printed  works  was  superseded  and 
replaced  by  the  rights  accorded  under  the  statute.  This  determi- 
nation was  reached  in  the  case  of  Donaldsons  v.  Becket,^  eleven 
judges  participating.  The  five  following  questions  were  put  to 
their  Lordships: 

1.  "Whether  at  common  law  an  author  of  a  book  or  literary 
composition  had  the  sole  right  of  first  printing  and  publishing  the 
same  for  sale,  and  might  bring  an  action  against  any  person  who 
printed,  published  and  sold  the  same  without  his  consent." 

Three  of  the  judges  answered  this  question  in  the  negative,  as 
against  eight  who  held  the  affirmative. 

2.  ''If  the  author  had  such  right  originally,  did  the  law  take  it 

*  Donaldsons  v.  Becket,  4  Burrows,  2408. 

507 


508    Unfair  Competition  in  Use  of  Literary  Property 

away  upon  his  printing  and  publishing  such  book  or  literary  com- 
position, and  might  any  person  afterwards  reprint  and  sell,  for 
his  own  benefit,  such  book  or  literary  composition  against  the 
will  of  the  author." 

Seven  judges  held  the  negative  on  this  question,  as  against 
four  for  the  affirmative. 

3.  "If  such  action  would  have  lain  at  common  law,  is  it  taken 
away  by  the  statute  of  8th  Anne?  And  is  an  author  by  the  said 
statute  precluded  from  every  remedy  except  on  the  foundation 
of  the  same  statute  and  on  the  terms  and  conditions  prescribed 
thereby?" 

Five  judges  responded  in  the  negative  to  this  question,  as 
against  six  who  held  the  affirmative. 

4.  ''Whether  the  author  of  any  literary  composition,  and  his 
assigns,  had  the  sole  right  of  printing  and  publishing  the  same  in 
perpetuity  by  the  common  law." 

Four  judges  held  the  negative,  as  against  seven  in  the  affirma- 
tive. 

5.  "Whether  this  right  is  in  any  way  impeached,  restrained  or 
taken  away  by  the  statute  of  8th  Anne." 

Five  judges  held  the  negative,  as  against  six  in  the  affirmative. 
In  the  United  States  a  similar  interpretation  has  been  given  to 
the  copyright  law  of  1790,  by  the  United  States  Supreme  Court.  ^° 

»"  Holmes  v.  Hurst,  174  U.  S.  82-84.  Indeed,  the  Star  Chamber  seems  to 

Brown,  J.:  "The  right  of  an  author,  have  exercised  the  power  of  search, 

irrespective    of   statute,   to  his    own  confiscation  and  imprisonment  with- 

productions  and  to  a  control  of  their  out     interruption  from     ParUament, 

pubhcation,  seems  to  have  been  recog-  up  to  its  aboUtion  in   1641.     From 

nized   by   the   common   law,   but  to  this  time  the  law  seems  to  have  been 

have  been  so   ill  defined  that  from  in      an      unsettled     state— although 

an  early  period  legislation  was  adopted  Parliament  made  some  efforts  to  re- 

to    regulate    and    hmit    such    right,  strain  the  licentiousness  of  the  press  — 

The  earUest  recognition  of  this  com-  until  the  eighth  year  of  Queen  Anne, 

mon-law  right  is  to  be  found  in  the  when    the    first    copyright    act    was 

charter  of  the  Stationers'  Company,  passed,   giving   authors   a   monopoly 

and  certain  decrees  of  the  Star  Cham-  in  the  publication  of  their  works  for 

ber  promulgated  in  1556,  1585,  1623  a  period  of  from  fourteen  to  twenty- 

and  1637,  providing  for  licensing  and  eight    years.      Notwithstanding    this 

regulating   the   manner   of    printing,  act,    however,    the    chancery    courts 

and  the  number  of  presses  through-  continued  to  hold  that,  by  the  com- 

out    the    Kingdom,  and    prohibiting  mon  law  and  independently  of  legis- 

the  publication  of  unlicensed  books,  lation,  there  was  a  property  of  un- 


Copyright 


509 


The  limitations  of  the  right  of  an  author  in  his  printed  works 
thus  put  in  force  have  not,  however,  affected  his  rights  in  a  book 
or  composition  unpubHshed  within  the  meaning  of  the  copyright 
statutes.  It  is  now  well  settled  both  in  this  country  and  in 
England  that  an  author  has  by  law  a  right  to  the  first  publica- 
tion of  his  literary  works.  He  has  a  right  to  determine  whether 
they  shall  be  published  at  all,  and  if  published,  when,  where, 
by  whom,  and  in  what  form.^ 

§  272.  Copyright.  —  Various  statutes  have  been  enacted  in  the 
jurisdictions  wherein  the  common  law  prevails,  granting  to  authors 
and  owners  of  unpublished  literary  works  a  monopoly  in  the  publi- 
cation of  their  works  for  certain  prescribed  periods.  The  statutes 
aim  to  protect  the  ''property  in  the  literary  composition, — the 
product  of  the  mind  and  genius  of  the  author"  ^  and  do  not  af- 
ford protection  against  use  of  a  similar  title  by  another  in  connec- 


limited  duration  in  printed  books. 
This  principle  was  affirmed  so  late 
as  1769  by  the  Court  of  King's  Bench 
in  the  very  carefully  considered  case 
of  Millar  v.  Taylor,  4  Burrows,  2303, 
in  which  the  right  of  the  author  of 
'Thomson's  Seasons,'  to  a  monopoly 
of  this  work,  was  asserted  and  sus- 
tained. But  a  few  years  thereafter 
the  House  of  Lords,  upon  an  equal 
division  of  the  judges,  declared  that 
the  common-law  right  had  been  taken 
away  by  the  statute  of  Anne,  and  that 
authors  were  limited  in  their  monopoly 
by  that  act.  Donaldsons  v.  Becket, 
4l  Burrows,  2408.  This  remains  the 
law  of  England  to  the  present  day. 
An  act  similar  in  its  provisions  to  the 
statute  of  Anne  was  enacted  by  Con- 
gress in  1790,  and  the  construction 
put  upon  the  latter  in  Donaldsons  v. 
Becket,  was  followed  by  this  court 
in  Wheaton  v.  Peters,  8  Pet.  591. 
While  the  propriety  of  these  decisions 
has  been  the  subject  of  a  good  deal 
of  controversy  among  legal  writers, 
it  seems  now  to  be  considered  the 
settled  law  of  this  country  and  Eng- 
land that  the  right  of  an  author  to  a 


monopoly  of  his  publications  is  meas- 
ured and  determined  by  the  copyright 
act — in  other  words,  that  while  a  right 
did  exist  by  common  law,  it  has  been 
superseded  by  statute." 

2  Pahner  v.  DeWitt,  47  N.  Y.  532. 
"The  author  of  a  literary  work  or 
composition  has  by  law  a  right  to 
the  first  the  publication  of  it.  He  has  a 
right  to  determine  whether  it  shall 
be  published  at  all,  and  if  published, 
when,  where,  by  whom,  and  in  what 
form.  This  exclusive  right  is  confined 
to  the  first  publication.  When  once 
published  it  is  dedicated  to  the  public, 
and  the  author  has  not  at  common 
law  any  exclusive  right  to  multiply 
copies  of  it,  or  to  control  the  subse- 
quent issues  of  copies  by  others." 
Gokhnark  v.  Kreling,  35  Fed.  661. 
"The  law  protecting  the  rights  of 
authors  in  their  compositions,  literary 
and  musical,  where  they  have  not 
been  dedicated  to  the  public,  or 
published  with  the  author's  consent, 
is  well  established." 

^Osgood  V.  Allen,  18  Fed.  Cas. 
No.  10,603. 


510     Unfair  Competition  in  Use  of  Literary  Property 


tioii  with  a  different  work.^  The  right  granted  to  an  author  or 
proprietor  of  a  Hterary  work  is  that  of  multiplying  copies  of  it  to 
the  exclusion  of  others.  It  is  purely  statutory.''  Publication  of  a 
literary  work  is  a  condition  precedent  to  obtaining  a  copyright.^ 
Upon  the  expiration  of  the  period  prescribed  in  the  copyright 
statutes,  the  literary  property  which  has  been  copyrighted  be- 
comes jmblici  jurisJ 

§  273.  Publication.  —  Under  the  common-law  rule  as  above 
stated  publication  of  literary  work  did  not  affect  the  author's 
or  proprietor's  rights  of  ownership.  Since  the  enactment  of  the 
copyright  statutes  in  the  United  States  and  England  publica- 
tion of  a  literary  production  is  considered  a  dedication  of  the 

^Corbett  v.  Purdy,  80  Fed.  901.  '^O'Neill  v.  General  Film  Co.,  171 
"  The  right  secured  by  the  copyright      App.  Div.  (X.  Y.)  854. 


act  is  the  property  in  the  hterary 
composition,  and  not  in  the  name  or 
title  given  to  it.  In  no  case,  so  far 
as  this  court  is  advised,  has  protec- 
tion been  afforded  by  injunction 
under  the  copyright  laws  to  the  title 
alone,  separate  from  the  book  or 
dramatic  composition  which  it  is 
used  to  designate."  Citing  Osgood  v. 
Allen,  1  Hohnes,  185,  Fed.  Cas. 
No.  10,603. 

Harper  v.  Ranous,  67  Fed.  904. 
"  The  apphcation,  however,  for  an  in- 
junction against  the  mere  use  of  the 
name  'Trilby'  as  the  title  of  any  dra- 
matic composition  which  does  not 
present  such  scenes,  incidents,  plot,  or 
dialogue,  or  simulated  or  colorable 
imitation  or  adaptation  thereof,  is  de- 
nied. It  is  the  name  in  connection  wuth 
the  novel,  not  the  name  alone,  wliich 
the  copyright  law  protects." 

'Palmer  v.  DeWitt,  47  N.  Y.  532. 
"The  right  of  an  author  or  pro- 
prietor of  a  literary  work  to  multiply 
eopies  of  it,  to  the  exclusion  of  others, 
is  the  creature  of  statute.  This 
is  the  right  secured  by  the  copy- 
right laws  of  the  different  govern- 
ments." 


"An  author  or  owner  of  a  book  or 
play,  by  publishing  it,  which  is  a 
condition  precedent  to  obtaining  a 
copyright,  waives  and  abandons  his 
common-law  rights  therein,  and  must 
thenceforth  depend  upon  the  statutory 
rights  conferred  by  the  acts  of  Con- 
gress. (Calliga  v.  Interocean  News- 
paper Co.,  157  Fed.  186;  aff'd  215  U.  S. 
182;  Jewelers  Mercantile  Agency  v. 
Jewelers  Publishing  Co.,  155  N.  Y.  241; 
Photo  Drama  Motion  Picture  Co.  v.  So- 
cial Uplift  Film  Corp.,  220  Fed.  448.)" 

'  Ogilvie  v.  G.  &  C.  Merriam  Co.^ 
149  Fed.  860. 

"A  copyright,  the  same  as  a  patent, 
is  a  monopoly  created  by  statute. 
This  monopoly  is  granted  upon  the 
implied  condition  that  at  the  expira- 
tion of  the  copyright  the  book  and 
the  name  by  which  it  is  designated 
are  dedicated  to  the  public;  in  other 
words,  at  the  expiration  of  the  copy- 
right, both  the  book  and  its  generic 
name  become  pubHc  property.  To 
say  that  the  public  have  the  right  to 
publish  the  book,  and  not  the  inci- 
dental right  to  use  the  name  by  which 
it  is  known,  is  in  effect  to  destroy 
the  public  right,  and  to  perpetuate 
the  monopoly." 


Publication  511 

work  to  the  public  and  the  author  or  proprietor  has  not,  aside 
from  the  copyright  statutes,  any  exclusive  right  to  multiply 
copies  of  it  or  to  control  the  subsequent  issue  of  copies  by  others.^ 
"^^Tiat  constitutes  a  publication  sufficient  to  affect  an  author's 
literary  property  must,  therefore,  be  determined  by  considering 
the  decisions  construing  the  various  copyright  statutes.  If  the 
act  of  the  author  constitutes  a  publication  within  the  meaning 
of  these  statutes  without  affording  him  the  statutory  protection 
the  public  may  enjoy  free  use  of  his  literary  work.  Parker,  Ch.  J., 
of  the  New  York  Court  of  Appeals  defining  publication  said: 
''The  present  state  of  the  law  is  that  if  a  book  be  put  within 
reach  of  the  general  public  so  that  all  may  have  access  to  it,  no 
matter  what  limitations  be  put  upon  the  use  of  it  by  the  indi- 
vidual subscriber  or  lessee,  it  is  published,  and  what  is  known  as 
the  common-law  copyright,  or  right  of  first  publication,  is  gone."  ^ 
Publicly  performing  a  dramatic  composition  is  not  sufficient  pub- 
lication to  destroy  the  author's  common-law  property  therein,^*' 
nor  is  the  exhibition  of  a  painting  in  an  art  gallery  to  which  the 
public  is  admitted,  if  the  rules  of  the  exhibition  provide  that  no 
copy  of  the  works  may  be  made.^^  Printing  a  book  serially  in  a 
magazine  is  a  publication,  ^^  and  the  same  effect  is  given  to  the 

^Wheaton   v.    Peters,   8   Pet.    591;  dramatic    composition,    not    printed 

Donaldsons  v.  Becket,  4  Burrow,  2408;  and  published,  does  not  deprive  the 

Drone  on  Copyright,  p.  116.  owner  of  his  common-law  right,  save 

^Jewelers'     Mercantile    Agency    v.  by  operation  of  statute.    At  common 

Jewelers'  Pub.  Co.,  155  N.  Y.  241.  law,   the  public  performance  of  the 

Wagner  v.  Conried,  125  Fed.  798.  play  is  not  an  abandonment  of  it  to 

The   German   opera   "Parsifal"    was  the  public  use." 

pubhshed  by  a  firm  entitled  to  the  ^^  Werckmeister  v.  American  Lithe- 
exclusive  publication  of  the  same  graphic  Co.,  ISA  Fed.  S21. 
under  a  contract  reserving  the  acting  Case  holds  that  an  exhibition  of  a 
rights  to  the  composer's  heirs.  Com-  painting  in  the  Royal  Academy, 
plete  copies  of  the  work  were  offered  London,  where  the  pubUc  were  ad- 
for  sale  in  the  United  States  so  that  mitted  to  view  paintings  on  pay- 
"the  pubUc,  mthout  discrimination  ment  of  admission  fee  but  were  not 
of  persons,  had  an  opportunity  of  allowed  to  copy  the  pictures  exhibited 
enjoying  them,"  containing  a  notice  was  not  a  publication  of  the  artist's 
of  the  reservation  of  right  for  stage  work. 

production.      Held,    that    the    opera  Case   reviews   the    authorities   re- 
was    dedicated    to    public    and    the  lating  to  publication  generally, 
reservation  of  right  ineffective.  See  American  Tobacco  Co.  v.  Werck- 

10  Ferris  v.  Frohman,  223  U.  S.  435.  meister,  146  Fed. 375,  aff'd 207  U.S.284. 

"The    public    representation    of    a  ^'^  Holmes  v.  Hurst,  174  U.  S.  82. 


512    Unfair  Competition  in  Use  of  Literary  Property 

act  of  filing  house  plans  with  the  building  department  of  a  city 
as  a  preliminary  to  securing  the  consent  necessary  to  the  erection 
of  a  building.^''  Sending  a  sample  out  to  the  trade  is  not  a 
published  edition  within  the  meaning  of  the  copyright  laws.^^ 

§  274.  Trade-Mark  Rights  Arising  in  Connection  with  Literary 
Property.  —  "An  author  or  proprietor  of  an  unpublished  literary 
work  has  then  a  property  in  such  work,  recognized  and  protected 
both  here  and  in  England,  and  the  use  and  enjoyment  of  it  is  se- 
cured to  him  as  of  right.  This  property  in  a  manuscript  is  not  dis- 
tinguishable from  any  other  personal  property.  It  is  governed  by 
the  same  rules  of  transfer  and  succession,  and  is  protected  by 
the  same  process,  and  has  the  benefit  of  all  the  remedies  accorded 
to  other  property  so  far  as  applicable."  ^^  There  is  nothing 
inherent  in  literary  property  to  prevent  the  courts  from  applying 
the  general  principles  of  the  law  governing  cases  of  unfair  com- 
petition, to  protect  an  author's  rights.  ^^  It  would  seem,  there- 
fore, that  a  vahd  trade-mark  right  may  be  acquired  in  connection 
with  literary  property,  if  a  person  conforms  to  the  requirements 
of  the  law  relating  to  trade-marks  generally.  ^^  Any  other  manner 
of  using  a  mark  in  connection  with  literary  property  will  be  of 
no  avail.  ^^  Where  a  person  has  perfected  a  trade-mark  right  in 
connection  with  literary  property,  the  protection  accorded  him 
is  no  more  nor  less  than  if  he  had  acquired  the  mark  in  connec- 
tion with  ordinary  merchandise.     Accordingly,  use  of  a  trade- 

Pul)lication  of  a  book  serially  in  a  has  been  applied  to  a  game  or  to  cigars, 

magazine  prior  to  securing  copyright  or  to  anything  else  which  is  distin- 

vitiates     a     copyright     subsequently  guished  by  a  label,  or  by  the  distinc- 

procured.  tive  form  or  style  of  the  package." 

"  Wright   V.   Eisle,   86   App.    Div.  "  See  chapters  on  "  Trade-marks." 

(N.  Y.)  356.  18  Kipling  v.   G.  P.  Putnam  Sons, 

"  Stacker  Lithograph  Co.  v.  Dunstm  120  Fed.  631. 

Lithograph  Co.,  233  Fed.  601;  Falk  v.  "We  do  not  intend  to  decide  that 

Gast  Lithograph  &  Engraving  Co.,  54  such  a  trade-mark  is  sanctioned  by 

Fed.  890.  the   law,   but   even   if   it  were,  it  is 

"  Palmer  v.    De    Witt,  47   N.    Y.  manifest  that  the  mark  does  not  lose 

532.  its    characteristics    because    used    to 

"  DvUon   &   Co.   V.    Cupples,    117  designate     an    unusual     variety     of 

App.  Div.  172.  'goods.'     In  other  words,  the  author, 

"Upon  the  general  right  of  the  plain-  assuming  that  he  may  have  such 
tiff  to  protective  relief,  we  cannot  protection,  must  comply  with  the 
see  any  reason  why  the  same  rule  law  if  he  would  have  a  valid  trade- 
should    not    apply    to   a   book    that  mark." 


Analogy  Between  Unfair  Competition  and  Copyright  513 

mark  in  connection  with  the  sale  of  a  book  will  not  afford  its 
owner  protection  against  infringement  of  the  Hterary  property  in 
the  book.^^  The  law  of  trade-marks  prevents  simulation  of  a  mark 
in  connection  with  an  article  s«ld  and  in  no  way  prevents  simula- 
tion of  the  article  itself. 

The  difficulty  in  applying  the  law  of  trade-marks  to  literary 
property,  as  shown  iji  the  reported  cases,  lies  in  the  fact  that 
authors  seek  to  make  trade-marks  of  the  titles  given  to  their  works, 
or  to  their  own  names  or  pseudonyms  and  thus  attempt  to  pro- 
tect their  literary  property.  It  is  obvious  that  the  title  of  a  book 
or  play  is  descriptive  and  cannot  be  exclusively  appropriated  as 
a  trade-mark.  It  is  the  name  and  the  only  name  used  by  the  public 
to  designate  the  article  to  which  it  is  applied.  The  name  of  an 
author' or  his  pseudonym  is  also  aptly  descriptive  and  may,  there- 
fore, be  used  by  anyone  entitled  to  use  a  published  literary  work. 

§  275.  Analogy  between  Actions  for  Unfair  Competition  and 
Infringement  of  Copyright.  —  There  is  no  marked  degree  of  simi- 
larity between  the  property  which  exists  in  a  trade-mark  or  trade- 
name and  that  which  is  created  by  the  copyright  laws.  The  right 
secured  by  the  copyright  laws  is  the  property  in  a  literary  com- 
position, —  the  product  of  the  mind  and  genius  of  the  author  and 
not  in  the  name  or  title  given  to  it.  On  the  other  hand,  the  prop- 
erty protected  in  cases  involving  the  infringement  of  a  trade- 
mark or  trade  name  is  the  right  to  use  a  name  or  symbol  to  in- 
dicate a  good-will. 2°  There  is  this  analogy,  however,  in  both 
classes  of  cases  that  when  an  infringement  occurs  the  basis  of 

^^  Black   V.   Ehrich,   4:4:   Fed.    793;  essence  of  the  wrong  consists  in  the 

Atlas  Mfg.  Co.  v.  Street  &  Smith,  204  sale  of  the  goods  of  one  manufac- 

Fed.  398;  Osgood  v.   AlleJi,  18   Fed.  turer  or  vendor  as  those  of  another. 

Cas.    871,   No.     10,603    (1    Holmes,  It  is  only  when  this  false  representa- 

185).     Suit    by  purchaser   of    "Our  tion   is   directly   or   indirectly   made 

Young    Folks"  to    restrain    use    of  that  the  party  who  appeals  to  a  court 

title  "Our  Young    Folks  Illustrated  of  equity  can  have  relief.    Delaware  & 

Paper."       Injunction  refused.  H.    Canal    Co.    v.    Clark,    13    Wall. 

^^  Osgood  v.  Allen,   18  Fed.  Cas.,  (80  U.  S.)    311,  322.    Words  or  de- 

p.  871;  Case  No.  10603.  vices  may  be  adopted  as  trade-marks, 

"Property  in  the   use  of  a  trade-  which  are  not  original  inventions  of 

mark  or  name  has  very  little  analogy  the  one  who  adopts  and  uses  them, 

to   that   which   exists   in   copyrights  Words  in  common  use  may  be  adopted 

or    patents    for    inventions.      In    all  if,  at  the  time  of  adoption,  they  were 

cases  where   rights  to   the  exclusive  not  used   to  designate  the  same  or 

use  of  a  trade-mark  are  invaded,  the  similar    articles    of    production.      A 


514    Unfair  Competition  in  Use  of  Literary  PROPEUTr 

the  plaintiff's  remedy  is  that  another  person  makes  use  of  plain- 
tiff's property  and  endeavors  to  pass  it  off  as  his  own.-^ 

§  276.  The  Doctrine  of  Unfair  Competition  as  Applied  to 
Literary  Property.  —  Irrespective  of  the  protection  afforded  by 
the  copyright  statutes,  the  law  does  not  leave  remediless  a  per- 
son damaged  by  acts  of  unfair  competition  in  the  use  of  published 
literary  works.  "A  pubUcation  is  the  subject  of  property,  and 
there  is  no  reason  why,  like  every  other  kind  of  property,  it 
should  not  be  subject  of  the  law's  protection.  To  put  out  a 
colorable  imitation  of  it,  by  which  the  public  may  be  easily  mis- 
led into  supposing  that  it  is  the  literary  article  they  have  in  mind  to 
obtain  and  read,  is  an  act  of  deception  which  injures  the  public."  ^^ 


generic  name,  or  a  name  merely 
descriptive  of  an  article  of  trade,  or 
its  qualities  or  ingredients,  cannot  be 
adopted  as  a  trade-mark,  so  as  to 
give  a  right  to  the  exclusive  use  of 
it.  The  office  of  a  trade-mark  is  to 
point  distinctively  to  the  origin  or 
ownership  of  the  article  to  which  it 
is  affixed.  Marks  which  only  indi- 
cate the  names  or  qualities  of  prod- 
ucts cannot  become,  the  subjects  of 
exclusive  use,  for,  from  the  nature  of 
the  case,  any  other  producer  may 
employ,  with  equal  truth  and  the 
same  right,  the  same  marks  for  like 
products.  *     *     * 

"Applying  these  principles  to  the 
case  before  the  court,  the  question 
presented  on  this  branch  of  the  case 
is,  whether  the  defendant  has  so  simu- 
lated the  mark  of  the  complainant 
as  to  deceive  the  public,  so  that  the 
public  will  naturally  mistake  his 
publication  for  that  of  the  com- 
plainant." 

"  West  Publishing  Co.  v.  Edward 
Thompson  Co.,  169  Fed.  833-853. 

"Actual  cop3dng,  or  such  para- 
phrasing as  to  be  equivalent  to  copy- 
ing, was  at  first  considered  to  be  the 
only  form  of  infringing  use  of  copy- 
righted   material.      But    the    great 


diversity  of  printed  publications,  and 
the  many  phases  of  literary  activity, 
especially  when  applied  to  minor  pur- 
suits, ultimately  forced  the  construc- 
tion of  the  copyright  statute,  in  which 
the  basis  of  injury  is  found  in  the 
unfair  use  of  the  material  of  the  work 
in  making  up  a  book  of  similar  na- 
ture, as  well  as  in  a  direct  copying  or 
paraphrasing  of  the  words  therein 
contained.  This  extension  of  the 
law  of  copyright  brings  the  case 
closely  into  the  realm  of  unfair  com- 
petition. But,  while  a  likeness  may 
be  traced  in  the  principles  upon 
which  this  class  of  actions  is  founded, 
yet  in  application  and  in  scope  a 
sharp  line  of  distinction  can  be  drawn. 
Copyright  is  based  upon  statute, 
while  unfair  competition  (except  as 
it  may  be  affected  by  legislative  en- 
actment, in  connection  with  patents, 
trade-marks,  etc.)  is  dependent  upon 
abstract  principles  of  law.  Copy- 
right relates  to  the  printed  material 
of  a  pubUcation  while  unfair  compe- 
tition may  be  concerned  with  any 
article  of  trade,  whether  having  words 
or  letters  in  its  composition  and  ap- 
pearance or  not." 

"  Monroe  v.  Tousey,  129  N.  Y.  38; 
G.    &    C.  Merriam    Co.    v.   Strauss, 


Doctrine  Applied  to  Literary  Property 


515 


The  general  principles  of  law  governing  cases  of  unfair  com- 
petition are  the  same  when  applied  to  literary  property  as  any 
other  commercial  article.  Fraud  is  the  basis  of  the  cause  of 
action,  and  must  be  established  to  entitle  the  plaintiff  to  relief.^' 


136  Fed.  477.  Wallace,  C.  J., 
said: 

"But  there  may  be  a  commercial 
property  in  books  as  well  as  a  literary- 
property,  and  when  a  puljlisher  has 
imparted  to  his  books  peculiar  charac- 
teristics, which  enable  the  public  to 
distinguish  them  from  other  books 
embodying  the  same  literary  prop- 
erty, and  to  recognize  them  as  his 
particular  product,  there  is  no  reason 
why  the  principles  which  interdict 
unfair  comp  tition  in  trade  should 
not  afford  him  protection  against 
the  copying  of  the  characteristics  by 
rivals.  So  far  as  the  bill  proceeds 
upon  this  theory,  it  presents  a  meri- 
torious case." 

"  Atlas  Mfg.  Co.  v.  Street  &  Smith, 
204  Fed.  398. 

"But  complainants  insist  that  we 
shall  consider  their  books  not  from 
a  literary  standpoint  but  as  mer- 
chandise, and  cite  numerous  cases 
recognizing  that  the  principles  of 
trade-mark  law,  and  the  law  for- 
bidding unfair  competition  in  busi- 
ness, may  under  certain  conditions 
apply  to  books,  magazines,  periodicals 
and  newspapers.  That  they  may  and 
do  apply  to  magazines,  periodicals 
and  newspapers,  as  such,  we  have 
already  seen;  to  books  the  application 
is  more  limited." 

Dicks  V.  Yates,  18  Ch.  Div.  76,  87 
(1881). 

The  case  involved  a  novel  entitled 
"Splendid  Misery;  or.  East  End  and 
West  End,  by  C.  H.  Hazlewood." 
It  was  copyrighted,  but  the  court 
held  that  did  not  protect  the  use  of 
the    hackneyed     phrase,    "Splendid 


Misery."  It  was  not  practicable  as 
a  trade-mark,  because  the  public 
would  not  be  led  to  believe  that 
they  were  buying  one  novel  when  they 
were  actually  buying  the  other.  De- 
fendant's full  title  was,  "Splendid 
Misery,  by  the  Author  of  Lady 
Audley's  Secret,  Vixen,  &c."  The 
court  considered  whether  or  not 
any  "common-law  fraud"  was  in- 
volved, in  the  following  language: 

"Supposing  a  man  were  to  publish 
a  book,  calling  it  'Soyers'  Cookery 
Book,'  which  it  is  not,  or  'Colenso's 
Arithmetic,'  which  it  is  not,  *  *  * 
that  is  a  common-law  fraud." 

Kelly  V.   Byles,    13   Ch.  Div.  682. 

Plaintiff  published  "Post  Office 
Directory  of  West  Riding  of  York- 
shire," for  36  shillings.  Defendant 
threatened  to  publish  "Post  Office 
Bradford  Directory"  for  7  shillings 
6  pence.  Bradford  was  included  in 
plaintiff's  directory,  occupying  126  of 
the  1704  pages.  The  court  below 
said: 

"To  hold  under  these  circumstances 
that  any  person  desiring  to  possess 
the  plaintiff's  West  Riding  Directory 
might  be  misled  or  deceived  into  buy- 
ing the  defendant's  Bradford  Direc- 
tory, seems  to  me  to  be  wholly  un- 
warranted by  the  facts  in  evidence, 
and  so  grossly  improbable  as  to  be 
impossible  to  be  inferred"  {id.,  pp.  690, 
691). 

James,  L.  J.,  said  on  appeal: 

"The  words  'Post  Office'  in  con- 
nection with  a  directory  are  descrip- 
tive of  the  work,  and  imply  that  it 
was  compiled  with  the  assistance  of 
the  letter  carriers  and  other  servants 


510    Unfair  Competition  in  Use  of  Literary  Property 

Courts  recognize  that  the  title  of  a  literary  work,  although  a 
word  common  to  the  language,  may  acquire  a  secondary  meaning 
pointing  to  the  origin  of  the  work  in  connection  with  which  it 
has  been  long  used.  Accordingly,  if  the  title  is  used  by  another 
in  its  secondary  meaning,  an  injunction  will  lie  restraining  such 
use,  but  all  persons  will  be  permitted  free  use  of  the  title  in  its 
primary  sense.  ^^ 


of  the  Post  Office,  and  for  this  reason 
is  calculated  to  give  the  most  accurate 
information.  Now,  the  plaintiff  does 
not  obtain  the  assistance  of  the  serv- 
ants of  the  Post  Office,  and  the  title 
of  his  directories  represents  what  is 
not  strictly  true.  But  in  the  case  of 
the  defendants  the  use  of  the  word  is 
strictly  correct.  He  did  get  the  as- 
sistance of  the  servants  of  the  Post 
Office  at  Bradford.  He  had  a  right 
to  get  that  assistance  if  he  could, 
and  he  had  a  right  to  say  that  he  had 
got  it.  It  does  not  appear  that  any- 
body has  been  deceived,  and  there 
was  no  evidence  that  what  has  been 
done  was  calculated  to  deceive  the 
pubUc"  (id.,  p.  692). 

Black  V.  Ehrich,  44  Fed.  793. 

"  With  the  exception  of  the  copy- 
righted articles,  the  entire  literary 
matter  of  'The  Encyclopaedia  Bri- 
tannica.  Ninth  Edition/  is  public 
property  in  this  country,  at  least,  and 
a  rival  publisher  has  the  legal  right 
to  make  any  use  of  it  he  sees  fit.  He 
may  use  any  part  of  it,  or  all  of  it, 
and  call  it  by  what  name  he  prefers. 
Neither  the  author  nor  proprietor  of 
a  literary  work  has  any  property  in 
its  name.  It  is  a  term  of  description, 
which  serves  to  identify  the  work; 
but  any  other  person  can  with  im- 
punity adopt  it,  and  apply  it  to  any 
other  book,  or  to  any  trade  com- 
modity, provided  he  does  not  use  it 
as  a  false  token,  to  induce  the  public 
to  beUeve  that  the  thing  to   which 


it  is  applied  is  the  identical  thing 
which  it  originally  designated.  If 
literary  property  could  be  protected 
upon  the  theory  that  the  name  by 
which  it  is  christened  is  equivalent 
to  a  trade-mark,  there  would  be  no 
necessity  for  copyright  laws." 

Ki-pling  v.  G.  P.  Putnam  Sons,  120 
Fed.  631. 

"Actions  of  this  character  are 
based  essentially  upon  fraud.  Fraud 
must  be  proved.  It  can  not  be  in- 
ferred from  unimportant  similarities, 
not  calculated  to  mislead  the  pur- 
chaser. The  action  may  be  main- 
tained where  it  appears  that  the  de- 
fendant is  destroying  or  attempting 
to  destroy  an  honest  business  by  dis- 
honest means.  The  gravamen  of  the 
action  is  a  fraudulent  purpose  on  the 
part  of  the  defendant  to  represent 
to  the  public  that  the  plaintiff's  busi- 
ness is  his  business,  and  by  fraudulent 
mis-statements  to  deprive  the  plaintiff 
of  the  profits  which  he  would  other- 
wise receive." 

^*  Stokes  v.  Allen,  56  Hun,  526, 
Daniels,  J.,  said: 

"It  may  properly  be  conceded  that 
words  of  common  use  may  be  so  em- 
ployed as  to  acquire  a  limited  addi- 
tional significance  by  way  of  desig- 
nating a  particular  article  of  manu- 
facture or  production,  and  in  th^t 
sense  be  entitled  to  the  protection  of 
the  court  by  way  of  injunction  against 
infringement  by  another  person  or 
persons   (citing  case?).    But  the  law 


Books  and  Book  Titles 


517 


§  277.  Unfair  Competition  in  Connection  with  Books  and  Book 
Titles.  —  Under  the  principles  of  the  law  of  unfair  competition,  a 
publisher  who  has  long  sold  a  work  under  a  title  indicating  the 
origin  of  the  publication  is  entitled  to  an  injunction  restraining 
a  competitor  from  using  the  same  title.  ^^  Similarly,  a  publisher 
who  places  on  the  market  books  in  a  unique  style  of  binding,  with 
illuminated  type,  illustrations  and  decorated  borders,  is  protected 
from  the  damages  which  will  follow  a  competitor's  placing  on 
the  market  books  which  are  identical  copies  except  in  artistic 
merit  and  workmanship. ^^ 


has  not  been,  neither  does,  nor  could  it 
practically  be  extended  any  farther 
than  that.  *  *  *  But  it  is  necessary 
to  maintain  their  action  that  the  de- 
fendants should  have  employed  this 
word  'Life'  with  the  same  significance 
in  whole  or  in  part  as  it  has  been  em- 
ployed by  plaintiff,  and  that  from 
the  proofs  it  is  clear  they  have  not 
done." 

"  The  Chancellor  of  Oxford  Uni- 
versity V.  Wilmore-Andrews  Publishing 
Co.,  101  Fed.  443. 

The  plaintiff  had  long  used  the 
word  "Oxford"  to  designate  its  bibles, 
and  the  term  became  generally  known. 
The  defendant  published  a  bible  and 
printed  on  the  title  page  "Oxford 
Bible,  the  S.  S.  Teachers  edition." 
The  plaintiff  brought  suit  to  enjoin 
the  use  of  its  trade  name.  In  granting 
a  perpetual  injunction,  Wheeler,  C.  J., 
said: 

"The  plaintiff  has  no  copyright  of 
this  work,  and  anyone  would  of  course 
have  a  clear  right  to  print  and  pub- 
lish it,  but  no  one  would  have  a  right 
in  any  false  manner  to  represent  such 
a  product  as  the  work  of  the  plaintiff. 
The  use  of  the  name  upon  the  defend- 
ant's bibles  had  a  tendency  to  so  rep- 
resent, and  to  confuse  the  plaintiff's 
use  of  its  name  in  its  business." 

■'^  Button  &  Co.  V.  Cupples,  117 
App.  Div.  172. 


The  plaintiff  published  certain  un- 
copyrighted  hymns  and  poems  in  a 
unique  style  of  binding,  printed  with 
special  type  and  illuminated  capitals, 
containing  illustrations  and  decorated' 
borders.  The  defendant  placed  on 
the  market  identical  copies  of  the 
plaintiff's  publication,  except  that 
they  were  inferior  in  workmanship 
and  artistic  merit.  The  court  granted 
an  injunction  restraining  the  defend- 
ants from  publishing  and  selling"  re- 
productions of  the  plaintiff's  books. 
It  said : 

"The  obvious  purpose  of  publish- 
ing such  copies  was  to  trade  upon  the 
favorable  reputation  which  plaintiff 
had  established  for  its  books;  to  de- 
ceive many  purchasers  into  the  be- 
lief that  they  were  purchasing  plain- 
tiff's books,  and  to  damage  plaintiff 
by  the  unfair  use  of  its  ingenuity  in 
devising  the  general  make-up  of  its 
books  and  of  its  success  in  placing 
the  books  upon  the  market. 

"In  such  a  case  it  was  unnecessary 
for  plaintiff  to  prove,  dehors  the  books 
themselves,  that  defendants  were  in- 
spired by  a  fraudulent  intent  (Dmj 
V.  Webster,  23  App.  Div.  601;  Dunn 
Co.  V.  Trix  Mfg.  Co.,  50  id.  75),  nor, 
in  so  flagrant  a  case  as  the  present, 
is  it  necessary  to  prove  that  any  per- 
son was  actually  deceived  by  the 
imitation.     It  is  apparent  that  there 


618    Unfair  Competition  in  Use  of  Literary  Property 


Where  a  publisher  obtains  from  an  eminent  scholar  the  right 
to  publish  a  series  of  books  to  be  selected  by  him,  and  the  pub- 
lisher widely  advertises  that  fact,  an  injunction  will  be  granted 
against  the  sale  of  the  same  books  by  a  competitor  under  a  similar 
title  indicating  that  the  books  were  the  selection  of  the  scholar, 
even  though  the  general  appearance  of  the  book  is  different." 

A  publisher  will  be  restrained  from  imitating  the  title  and 
form  under  which  a  series  of  books  of  a  rival  has  become  known 
and  popular  with  the  public,  even  where  the  contents  of  the 
imitating  book  is  not  the  same  as  that  of  the  book  imitated.  ^^ 


was  every  probability  of  such  decep- 
tion, aud  that  is  precisely  what  the 
law  seeks  to  prevent.  (Vulcan  v. 
Myers,  139  N.  Y.  364.)" 

"  Collier  v.  Jones,  66  Misc.  97. 

Plaintiff  entered  into  an  agreement 
with  Dr.  Eliot,  whereby  the  plaintiff 
began  the  publication  of  a  series  of 
books  selected  by  Dr.  Eliot  in  uniform 
edition,  and  sold  the  same  under  the 
trade-mark  "Dr.  Ehot's  Five-foot 
Shelf  of  Books."  The  defendants, 
without  the  consent  of  the  plaintiff 
or  Dr.  Ehot,  caused  to  be  published 
a  series  of  books  entitled  "Dr.  Eliot's 
Famous  Five-Foot  Shelf  of  World's 
Greatest  Books." 

The  court  granted  an  injunction 
pendente  hte.    Newburger,  J.,  said: 

"There  appears  to  be  no  doubt  that 
the  defendants  are  seeking  by  unfair 
competition  or  unfair  trade  to  put 
upon  the  market  a  series  of  books. 
Although  it  is  not  similar  in  appear- 
ance and  make-up  to  the  set  which 
plaintiff  has  published,  yet,  in  adopt- 
ing the  name  of  'Dr.  Eliot's  Five- 
Foot  Shelf  of  Books,'  the  title  which 
plaintiff  has  advertised  extensively 
for  a  long  while,  there  is  indicated 
an  attempt  to  deceive  the  public  into 
buying  defendants'  publications,  be- 
lieving them  to  be  those  published 
by  the  plaintiff.  While  it  is  conceded 
by  the  defendants  that  their  publica- 


tions are  of  less  value,  yet,  as  their 
books  are  offered  for  sale  by  subscrip- 
tion, the  purchaser  will  not  see  the 
books  until  they  are  delivered.  Mr. 
Justice  Scott  in  Button  &  Co.  v. 
Cupples,  117  App.  Div.  176,  says: 
'Nor,  in  so  flagrant  a  case  as  the 
present,  is  it  necessary  to  prove  that 
any  person  was  actually  deceived  by 
the  imitation.  It  is  apparent  that 
there  was  every  probability  of  such 
deception,  and  that  is  precisely  what 
the  law  seeks  to  prevent.  (Vulcan  v. 
Mijers,  139  N.  Y.  364.)  Upon  the 
general  right  of  the  plaintiff  to  pro- 
tective relief  we  cannot  see  any  reason 
why  the  same  rule  should  not  be  ap- 
plied to  a  book  that  has  been  applied 
to  a  game,  or  to  cigars,  or  to  any- 
thing else  which  is  distinguished  by 
a  label,  or  by  the  distinctive  form  or 
style  of  the  package.  The  decisive 
fact  is  that  the  defendants  are  unfairly 
and  fraudulently  attempting  to  trade 
upon  the  reputation  which  plaintiff 
has  built  up  for  its  books.  The  right 
to  injunctive  relief  in  such  a  case  is 
too  firmly  established  to  require  the 
citation  of  authorities.'" 

28  Potter  V.  McPherson,  21  Hun,  559. 

Action  to  restrain  defendant  from 
publishing  and  selling  certain  copy 
books.  Complaint  alleged  that  the 
plaintiffs  wore  the  owners  of  a  trade- 
mark or  right  of  property  in  the  name 


Books  and  Book  Titles 


519 


"National  System  of  Penmanship" 
as  applied  to  certain  books,  published 
under  the  name  "Payson,  Dunton  & 
Scribner's  National  System  of  Pen- 
manship." The  defendant  published 
a  book  under  the  name  "Independent 
National  System  of  Penmanship." 

Daniels,  J.,  said: 

"An  inspection  of  the  books  dis- 
closes the  facts  that  they  are  published 
substantially  in  the  same  form  so  far 
as  general  appearance,  binding,  and 
color   of   the   covers   are    concerned; 
and  upon  the  cover  of  the  defendant's 
book  the  phrase  'National  System  of 
Penmanship,'   which   has   long    been 
the  title  of  the  plaintiffs'  publication, 
is  printed  in  the  same  manner,  the 
same  size  and  form  of  letters,  and 
occupying  the  same  position  as  they 
do  upon  the  cover  of  the  plaintiffs' 
book.    The  resemblance  of  the  words 
and  letters  composing  this  phrase  is 
as  complete  as  it  could  well  be  made, 
and  from  the  identity  of  the  contents 
of  the  books,  their  size,  and  general 
appearance,  the  conclusion  seems  to 
be  well  warranted,   that  they  could 
not  in  that  manner  have  found  their 
place    upon    the    defendant's    book, 
unless  it  was  the  result  of  design  upon 
their  part  to  imitate  the  plaintiffs' 
book.    *    *    *    In  order  to  render  it 
necessary  that  a  publication  or  imita- 
tion of  this  nature  should  be  restrained, 
it  is  sufficient  that  persons  who  may 
desire  to  purchase  the  plaintiff's  pub- 
lication, might  very  well  accept  that 
of    the    defendants,    supposing    and 
beheving  it  to  be  the  same.     That 
the  difference  might  be  readily  de- 
tected by  a  comparison  of  one  book 
with  the  other,  is  not  sufficient  to 
allow  the  defendants  to  appropriate 
and  use  the  plaintiffs'  title.     If  in  its 
use,  persons  under  ordinary  circum- 
stances,   desiring    to    purchase    one. 


would  receive  the  other  in  its  place, 
believing  that  they  had  obtained  the 
work  intended  to  be  bought,  that  will 
not  only  justify,  but  require  the  court 
to  interfere,  for  the  purpose  of  pre- 
venting the  use  of  the  plaintiffs' 
title." 

Estes  V.  Worthington,  31  Fed.  154. 

Plaintiff's  assignor  was  the  origina- 
tor of  the  title  "Chatterbox"  upon 
a  continuous  annual  series  of  books 
which  he  caused  to  be  compiled,  con- 
taining illustrations  and  stories  of  a 
class  and  style  adapted  to  young 
persons.  The  series,  called  "Chatter- 
box" became  widely  known  and  very 
popular  in  England  and  in  this  coun- 
try, and  "Chatterbox"  books  had  a 
distinctive  title  or  name,  appearance, 
style  and  manner  of  covering  and  of 
printing,  which  caused  them  to  be 
universally  recognized  as  the  books 
which  had  attained  and  had  main- 
tained a  well-known  and  highly  ap- 
preciated character. 

The  defendant  published  various 
juvenile  books,  which  simulate  the 
appearance  and  decoration  of  plain- 
tiff's Chatterbox  series,  but  do  not 
contain  the  contents  of  their  books. 
The  court  said: 

"The  use  by  the  defendant  of  the 
name  'Chatterbox'  upon  the  books 
which  are  represented  by  the  plain- 
tiffs' exhibits  in  this  case,  or  upon 
similar  books  of  a  juvenile  character, 
of  the  general  appearance  and  style 
of  the  plaintiffs'  books,  and  from 
presenting  to  the  public  for  sale 
juvenile  publications  with  the  use 
of  the  title  'Chatterbox'  and  thereby 
leading  the  public  to  believe  that 
they  are  the  publications  of  the  plain- 
tiffs', should  be  enjoined." 

Estes  V.  Williams,  21  Fed.  189. 

In  this  case  the  defendants  com- 
menced the  publication  of  a  series  of 


520    Unfair  Competition  in  Use  of  Literary  Property 


But  if  the  similarity  of  title  and  form  is  not  sufficient  to  deceive 
a  person  of  ordinary  intelligence,  no  relief  will  be  granted. ^^ 


books,  and  called  them  by  the  name 
"Chatterbox,"  and  made  them  so 
similar  in  appearance  and  style  to 
those  of  the  complainant's,  as  to  lead 
purchasers  to  think  that  they  were  the 
same.    The  court  said,  Wheeler,  J.: 

"As  a  matter  of  fact  that  it  is  found 
that  they  intended  to  make  the  books 
appear  to  be  the  same,  and  to  avail 
themselves  of  the  popularity  which 
the  books  had  attained  by  the  labor 
and  skill  bestowed  upon  them  by  and 
at  the  expense  of  Johnston.  There 
being  no  copyright  to  prevent,  the 
defendants  claim  the  right  to  so  print 
and  publish  the  series  of  books  in  this 
country,  and  that  if  they  have  not  the 
right,  the  orators  have  no  right  to 
prevent  them.  There  is  no  question 
but  that  the  defendants  have  the  right 
to  reprint  the  compositions  and  illus- 
trations contained  in  these  books,  in- 
cluding the  titles  of  the  several  pieces 
and  pictures.  *  *  *  That  does 
not  settle  the  question  as  to  the  right 
claimed  here.  There  is  work  in  these 
publications  aside  from  the  ideas  and 
conceptions.  Johnston  was  not  the 
writer  of  the  articles  nor  the  designer 
of  the  pictures  composing  the  books, 
but  he  brought  them  out  in  this  form. 
The  name  indicates  this  work.  The 
defendant,  by  putting  this  name  to 
their  work  in  bringing  out  the  same 
style  of  book,  indicate  that  their  work 
is  his.  This  renders  his  work  less 
remunerative,  and  while  continued 
is  a  continuing  injury  which  it  is  the 
peculiar  province  of  a  court  of  equity 
to  prevent." 

Estes  V.  Leslie,  27  Fed.  22. 

"It  is  true  that  the  name  'Frank 
Leslie'  is  added,  so  that  the  title  is 
'Frank     LesUe's     Chatterbox,'     and 


the  address  of  the  publishing  house  is 
put  on.  This  appears  to  be  done, 
however,  for  the  purpose  of  adding  the 
reputation  of  Frank  Leslie,  and  of 
that  publishing  house  to  that  of  the 
Chatterbox,  rather  than  for  that  of 
building  up  a  new  reputation  under 
that  name.  If  nothing  had  been 
wanted  of  the  popularity  which  had 
been  acquired  under  it,  and  which  it 
stood  for,  it  could  have  been  left,  and 
another  name  taken  to  build  up.  The 
defendants  do  not  copy  the  orators' 
publications,  but  imitate  them,  and 
apply  the  name  of  the  orators'  publica- 
tions to  their  imitations." 

An  injunction  was  granted. 

25  Lare  et  al.  v.  Harper  Bros.,  3rd 
Circuit,  March,  1898,  86  Fed.  481, 
30C.  C.  A.  373.     The  headnote  roads: 

"The  complainant  had  published  a 
book  entitled  'Farthest  North.  Nan- 
sen,'  composed  mainly  by  Dr.  Nansen. 
Afterwards  the  defendants  commenced 
the  publication  of  a  book  under  the 
title  'The  Fram  Expedition.  Nansen 
in  the  Frozen  World.'  The  defend- 
ant's book  contained  a  number  of 
portraits  and  illustrations  similar  to 
those  made  use  of  by  the  complainant, 
and  part  of  substantially  the  same 
literary  matter.  It  contained  accounts 
of  sundry  arctic  expeditions  prior  to 
Dr.  Nansen's  polar  voyage,  to  which 
reference  is  made  in  complainant's 
book. 

"  But  the  defendant's  book  differed 
from  the  complainant's  in  respect  to 
style,  price,  numl^er  of  volumes,  and 
color,  to  such  an  extent  that  an  or- 
dinary customer  possessing  common 
intelligence  would  not  mistake  the 
one  for  the  other.  II (hi  that  the 
complainant  was  not  entilied  to  a  pre- 


Books  and  Book  Titles 


521 


So,  also,  it  has  been  held  that  a  publisher  of  a  series  of  detec- 
tive stories  in  which  the  deeds  of  the  same  character  were  weekly 


liminary  injunction  on  the  ground  of 
unfair  competition." 

Bradford,  D.  J.,  said: 

"It  is  a  wholesome  doctrine  that 
equity  will  restrain  unfair  competition 
in  trade;  but  it  should  be  applied  with 
caution,  lest,  through  possible  mis- 
application, healthful  and  honorable 
competition  be  defeated.  Particularly 
is  this  true  with  respect  to  literary, 
historical  and  scientific  works.  The 
complainant  was  not  entitled  to  a 
monopoly  in  the  subject  of  arctic  ex- 
plorations; nor  had  it  an  exclusive 
right  to  publish  and  sell  books  relating 
to  Nansen's  polar  expedition.  That 
subject  was  open  to  the  world.  Nor 
had  the  complainant  an  exclusive 
right,  as  against  the  defendants,  to 
the  use  of  the  words  'The  Fram 
Expedition.  Nansen  in  the  Frozen 
World '  or  of  any  of  them.  There  can 
be  little  doubt  that  Nansen's  exploits 
served  to  kindle  popular  interest  in 
arctic  explorations.  In  fact,  the  record 
discloses  that  they  were  the  proxi- 
mate cause  of  the  publication  by  the 
defendants  of  their  book.  But  this 
circumstance  does  not  in  the  least 
militate  against  good  faith  or  fair 
dealing  on  their  part.  It  appears 
that  months  before  Nansen  began  to 
write  an  account  of  the  expedition, 
the  defendants  had  determined  to 
publish  a  book  on  that  and  kindred 
subjects.  Nor  does  the  appearance 
or  title  of  the  defendants'  ))ook  dis- 
close any  intent  to  indulge  in  unfair 
competition  with  the  complainant. 
Certainly  the  difference  between  the 
two  books  is  obvious  to  any  ordinary 
customer  of  such  works.  The  com- 
plainant's books  is  in  two  volumes 
containing,  respectively,  587  r.nd  714 


pages,  and  is  bound  in  brown  cloth. 
The  defendants'  book  is  in  one  volume 
containing  in  the  English  edition, 
531  pages  and  in  the  Norwegian  edi- 
tion 524  pages,  and  is  bound  in  blue 
cloth  in  both  editions.     *     *     * 

"  The  complainant's  book  in  two 
volumes  sells  at  $10,  and  that  of  the 
defendants  at  $2.00.  It  is  evident 
that  the  two  works  are  calculated 
respectively  to  meet  the  demands  of 
different  classes  of  purchasers.  There 
is  nothing  deceptive  in  the  cover, 
outside  title  or  title  page  of  the  de- 
fendants' fjook.  Those  titles,  taken 
in  conjunction,  are  fairly  descriptive 
of  the  subject-matter  of  the  volume. 
They  radically  differ  from  the  outside 
title  and  title  page  of  the  complain- 
ant's book.  Comparing  the  two  works, 
we  are  unable  to  perceive  that  any 
ordinary  customer  of  such  books  pos- 
sessing common  intelligence  should, 
in  the  absence  of  actual  fraud  prac- 
ticed upon  him,  mistake  the  one  for 
the  other,  without  gross  carelessness  on 
his  part.  The  answer  expressly  denies 
fraud  and  unfair  competition.  It  is  a 
rule,  subject  to  few  exceptions,  that  a 
preliminary  injunction  should  not  be 
awarded  on  ex  -parte  affidavits,  unless 
in  a  clear  case.  This  rule  has  full  ap- 
plication in  a  case  like  the  present, 
where,  though  the  bill  should  ulti- 
mately be  dismissed,  great  damage 
would  result  from  such  an  injunction 
to  the  standing  and  busiiress  of  a 
book  publishing  house.  If  there  be 
any  substantial  doubt  as  to  the  right 
to  a  preliminary  injunction  in  such  a 
case,  it  should  be  refused." 

Munro  v.  Touseij,  129  N.  Y.  38. 

The  plaintiff  published  a  series  of 
works     and     fiction     entitled     "Old 


522    Unfair  Competition  in  Use  of  Literary  Property 


features,  could  not  restrain  a  motion  picture  producer  from  ex- 
hibiting a  photo-play  in  which  the  same  character  appeared. 
The  articles  in  connection  with  which  the  controversy  arose 
were  held  by  the  court  to  be  so  dissimilar  that  there  was  no 
competition.  ^° 

Sleuth  Library,"  and  "Old  Sleuth, 
the  Detective"  was  designated  as 
their  author.  The  defendant  pul)hshed 
a  series  of  works  variously  entitled 
"Young  Sleuth,  the  Detective,  in 
Chicago,"  "Young  Sleuth,  the  Keen 
Detective"  and  other  similar  words 
containing  "Young  Sleuth."  Gray, 
J.,  said: 

"The  difference  in  the  caption  of 
the  story,  as  well  as  the  difference  in 
the  name  of  the  series  and  in  the  illus- 
tration upon  the  covers,  should  indi- 
cate to  the  most  ordinary  intelligence 
that  the  defendants'  pubhcations 
were  not  of  tales  of  'Old  Sleuth  the 
Detective'  or  parts  of  the  'Old 
Sleuth  Library.'     *    *    * 

"In  cases  such  as  this  it  should  pre- 
sume that  the  pubUc  makes  use  of 
the  senses  of  sight  and  hearing,  and 
that  it  is  possessed  of  a  sufficient 
amount  of  intelligence  to  note  the 
difference  the  senses  convey.  The 
court  ought  not  to  interfere  with  the 
freedom  of  conduct  of  trade  and  with 
general  business  competition.  Its 
power  to  restrain  should  be  reserved 
to  prevent  fraud  and  imposture  from 
some  real  resemblance  in  the  name 
and  appearance  of  the  publications." 

Stokes  v.  Allen,  56  Hun,  526. 

The  plaintiff  brought  an  action  to 
restrain  the  defendant  from  publish- 
ing a  book  entitled  "Spice  of  Life" 
as  an  infringement  of  the  plaintiff's 
book  which  was  known  as  "The  Good 
Things  of 'Life.'" 

The  plaintiff's  book  consisted  of 
extracts  of  a  publication  entitled 
"Life."    The  defendant's  publication 


consisted  of  extracts  from  other  maga- 
zines. The  books  were  quite  similar 
in  color  and  binding.  In  its  title, 
the  plaintiff  quoted  "Life,"  but  the 
defendant  did  not.  The  Court  held 
that  as  the  defendant  was  using  the 
term  "  Life  "  in  its  primary  significance, 
it  would  not  grant  an  injunction  re- 
straining such  use  saying:  "It  is  not 
sufficient  to  maintain  the  action  that 
purchasers  inattentively  might  ac- 
cept the  defendant's  pubhcation  in 
place  of  the  plaintiffs." 

30  Atlas  Mfg.  Co.  v.  Street  &  Smith, 
2{M  Fed.  398.  The  plaintiff  was  en- 
gaged in  the  business  of  publishing 
detective  stories  characterized  by  the 
general  name  of  "Nick  Carter."  Its 
publications  are  issued  weekly,  and 
each  week  has  a  different  story  under 
a  distinctive  title.  The  stories  are 
complete  in  themselves.  The  only 
connection  between  them  is  that  the 
detective  character  Nick  Carter  is 
the  central  figure  in  each.  The  com- 
plainant registered  the  name  "Nick 
Carter"  as  a  trade-mark  for  a  "weekly 
publication  devoted  to  fiction."  It  did 
not  obtain  a  copyright. 

The  defendants  were  engaged  in 
the  business  of  manufacturing  and 
selling  motion  pictures.  They  pro- 
duced a  motion  picture  entitled  "Nick 
Carter,  the  Great  American  Detec- 
tive, Solving  the  $100,000  Jewel 
Mystery."  Neither  the  plot,  situa- 
tion nor  people  of  this  motion  picture 
were  taken  from  complainant's  pub- 
lished works,  but  the  character  of 
Nick  Carter  appeared  in  the  same. 

The  Circuit  Court  of  Appeals  re- 


Books  and  Book  Titles 


523 


It  has  been  held  not  to  be  unfair  competition  to  reprint  an 
uncopyrighted  published  book  under  a  title  different  from  that 
selected  by  the  author,  ^^  and  with  which  the  book  has  become 
known.  Neither  can  an  author  of  literary  compositions  which 
are  pubhshed  as  a  collection  under  a  title  selected  by  him,  com- 
plain if  they  are  subsequently  reprinted  under  a  different  group- 
ing and  title. ^2 


versed  an  order  granting  a  preliminary 
injunction  and  dismissed  the  bill  for 
want  of  equity.  It  held  that  a  trade- 
mark did  not  protect  literary  rights 
in  a  book,  and  that  a  motion  pic- 
ture is  not  in  the  same  class  of  goods 
as  a  writing. 

"We  do  not  think  a  moving  picture 
show  is  of  the  same  class  as  a  written 
book.  One  belongs  to  the  field  of 
literature:  the  other  to  the  domain  of 
theatricals.  Originally  there  was  no 
legal  connection  between  the  written 
novel  and  a  dramatization  based  upon 
its  characters  and  incidents.  The 
connection  was  made  by  statute  in 
derogation  of  the  common  law.  In 
the  absence  of  copyright,  the  situation 
is  as  if  no  such  connection  had  ever 
been  made.  *  *  * 

"Neither  trade-mark  nor  trade- 
name can  afford  protection  to  detec- 
tive stories,  as  such,  whether  published 
or  still  unborn,  and  much  less  where 
neither  title  nor  composition  is  pirated, 
and  but  a  single  common  character  is 
used." 

"  Angers  v.  LeProhon,  Rap.  Jud. 
Quebec,  22  S.  C.  170. 

Plaintiff  published  an  uncopyrighted 
story  under  the  title  "Un  Amour 
Vrai"  using  the  pseudonym  Laure 
Cronon.  The  defendant  republished 
the  story  under  the  title  "Larmes 
d'Amour,"  and  used  the  pseudonym 
in  connection  therewith.  The  court 
dismissed  an  action  for  an  injunction 
brought  by  the  author. 


32  Kipling  v.  Fenno,  106  Fed.  692. 
Lacombe,  C.  J.,  said: 

"Many  of  complainant's  writings 
are  short  tales  or  poems,  requiring 
the  grouping  together  of  several  to 
make  up  a  single  volume  of  appro- 
priate size.  He  has  from  time  to  time 
thus  grouped  his  tales  and  poems, 
giving  to  the  volumes  which  contain 
such  groups  titles  of  his  own  selec- 
tion, 'Soldiers  Three,'  'Barrack 
Room  Ballads,'  and  what  not.  Such 
groups,  thus  entitled,  have  been  pub- 
lished with  his  authority,  and,  as  is 
conceded  for  the  purpose  of  this  argu- 
ment, without  any  copyright  protec- 
tion. Apparently  he  has  himself  from 
time  to  time  made  changes,  as  his 
own  taste  varied,  in  the  components 
of  the  different  groups,  though  that 
circumstance  is  probably  immaterial. 
Baldly  stated,  the  proposition  ad- 
vanced is  that  an  author,  whose  men- 
tal productions,  prose,  verse,  and 
title,  have  been  given  to  the  world  by 
publication  without  copyright,  so  that 
any  one  is  free  to  reprint  and  sell  the 
whole  or  any  part  of  them,  may 
nevertheless  regulate  the  manner  in 
which  such  reprinted  matter  may  be 
grouped  and  entitled,  and  may  re- 
strain any  application  of  the  title  he 
selected  otherwise  than  as  he  used  or 
uses  it.  No  authority  is  cited  which 
supports  any  such  proposition,  and, 
in  the  absence  of  authority,  the  ques- 
tion of  its  adoption  by  the  courts  had 
better  be  reserved  for  final  hearing." 


524    Unfair  Competition  in  Use  of  Literary  Property 


To  rebind  and  sell  copyrighted  books  is  not  unlawful/^  unless 
the  rebound  books  are  passed  off  as  new.^*  On  the  expiration 
of  the  term  of  copyright  of  a  book,  the  owner  of  the  expired  copy- 
right is  entitled  to  protection  in  the  same  manner  that  the  owner 
of  an  expired  patent  is  protected.  The  title  of  a  book,  during  the 
period  of  copjTight  monopoly,  becomes  descriptive  of  the  book 
in  connection  with  which  it  is  used,  and  on  the  termination  of 
the  monopoly  may  properly  be  used  by  anyone  in  connection 
with  such  work.  But  if  subsequently  the  title  is  so  used  by  a 
person  that  it  becomes  associated  in  the  mind  of  the  public  with 
that  person,  and  indicates  his  product,  the  courts  w^ill  not  permit 
the  use  of  the  title  by  another  in  connection  with  the  work,  un- 
less the  origin  of  the  book  is  clearly  indicated. ^^ 


33  F.  H.  Dodd  et  al.  v.  H.  J.  Smith, 
et  al,  144  Pa.  St.  340. 

The  plaintiff  owned  the  copyright 
of  the  works  of  E.  P.  Roe,  and  pub- 
lished two  editions  of  the  books;  one 
in  paper  cover  was  sold  at  $.50  per 
vohime,  the  other  was  cloth  bound  and 
sold  at  $1.50  per  volume. 

The  defendant  bought  copies  of  the 
paper  cover  edition,  and  bound  the 
book  in  imitation  of  plaintiff's  bound 
copies,  selling  them  at  about  S.45  per 
volume  to  the  trade.  The  court  re- 
fused to  grant  a  motion  for  preliminary 
injunction.  Doan  v.  American  Book 
Co.,  105  Fed.  772;  Bureau  of  Natural 
Literature  v.  Sells,  211  Fed.  379. 

^*  Doan  v.  American  Book  .Co.,  105 
Fed.  772;  Bureau  of  Natural  Literature 
V.  Sells,  211  Fed.  379;  Gin  &  Co.  v. 
Appolo  PublisJiing  Co.,  115  Fed.  772; 
Kipling  v.  G.  P.  Putnam  Sons,  120 
Fed.  631. 

Action  was  brought  to  recover  dam- 
ages for  infringement  of  plaintiff's 
copyrights  and  trade-marks  and  unfair 
competition.  The  defendants  pur- 
chased from  the  authorized  publishers 
of  the  plaintiff's  literary  works  copies 
of  liis  books.  They  bound  these  books 
uniforml}',  and  sold  the  same  as  the 


"Brushwood"  edition.  On  the  books 
of  these  volumes  the  defendants  placed 
an  elephant's  head  enclosed  in  a 
circle.  A  similar  marking  had  ap- 
peared on  the  "Outward  Bound" 
edition  of  Kipling's  works  published 
by  Scribner.  The  court  held  that 
there  was  no  infringement  of  copy- 
right, that  the  plaintiff  had  not  estab- 
lished a  trade-mark,  and  that  the 
plaintiff  had  failed  to  show  that  the 
defendants  were  guilty  of  unfair  com- 
petition. 

35  G.  &  C.  Merriam  Co.  v.  Ogilvie, 
159  Fed.  638. 

"The  right  to  use  a  copyrighted 
name,  however,  upon  the  expiration  of 
the  copyright,  goes  out  to  the  public 
subject  to  a  certain  and  well  under- 
stood limitation  or  condition,  namely, 
that  the  public  right  to  use  shall  be 
so  exercised  as  not  to  deceive  members 
of  the  public  and  lead  them  into  the 
belief  that  they  are  buying  the  par- 
ticular or  identical  thing  which  was 
produced  under  the  copjTight."  Aid- 
rich,  J.,  159  Fed.  640." 

Ogilvie  v.  G.  &  C.  Merriam  Co.,  149 
Fed.  858,  Colt,  J.,  said: 

"A  copyright,  the  same  as  a  patent, 
is   a   monopoly    created    by   statute. 


Books  and  Book  Titles 


525 


The  same  rules  hold  regarding  magazines  ^^  and  text-books  on 
the  ground  of  various  resemblances  of  form,  size,  binding,  print- 


This  monopoly  is  granted  upon  the 
implied  condition  that  at  the  expira- 
tion of  the  copyright  the  book,  and 
the  name  by  which  it  is  designated, 
are  dedicated  to  the  public;  in  other 
words,  at  the  expiration  of  the  copy- 
right, both  the  book  and  its  generic 
name  become  public  property.  To 
say  that  the  public  have  the  right  to 
publish  the  book,  and  not  the  inci- 
dental right  to  use  the  name  by  which 
it  is  known,  is  in  fact  to  destroy  the 
public  right  and  to  perpetuate  a 
monopoly.  For  instance,  to  hold  that 
the  Merriam  Co. ,  after  the  expiration  of 
its  copyright  in  Webster's  Unabridged 
Dictionary,  still  has  the  exclusive 
right  to  the  use  of  the  name  'Webster,' 
on  some  theory  of  trade-mark  or  trade 
name  or  unfair  competition,  would 
be  to  nullify  the  public  dedication 
and  perpetuate  the  monopoly  secured 
by  the  copyright.  It  follows,  there- 
fore, as  a  necessary  result  that  at  the 
expiration  of  the  copyright  any  person 
has  the  right  to  publish  the  copy- 
righted book  and  to  cal,l  it  by  its 
generic  name.  But  it  may  so  happen, 
as  in  the  case  at  bar,  that  at  the  ex- 
piration of  the  copyright  the  name 
by  which  the  book  is  known  has  also 
acquired  a  secondary  meaning,  and 
has  come  to  indicate  to  the  public 
the  book  published  and  sold  by  the 
publisher  who  took  out  the  copyright. 
In  such  a  case,  another  person  must 
so  use  the  name  as  to  protect  in- 
dividual property  rights  and  to  pre- 
vent injury  to  the  pubhc.  While 
no  restrictions  can  be  imposed  upon 
the  right  to  use  the  name,  such  per- 
son must,  so  far  as  is  consistent  with 


such  use,  protect  the  good-will  and 
business  of  the  original  publisher  and 
guard  the  public  against  decep- 
tion." 

Merriam  v.  Texas  Sif tings  Pub. 
Co.,  49  Fed.  944;  C.  C.  S.  C,  N.  Y., 
Shipman,  J.: 

"The  plaintiffs  are  not  entitled  to 
an  exclusive  use  of  the  name '  Webster's 
Dictionary'  upon  copies  of  editions 
the  copyrights  of  which  have  expired, 
for  the  name  is  not  a  trade-mark. 
Mere  copies  of  the  edition  of  1847 
and  1859  can  be  reproduced  by  a 
publisher,  over  his  own  name,  pro- 
vided he  makes  no  misrepresentations 
to  induce  the  public  to  believe  that 
it  is  another  book,  the  right  to  pub- 
lish which  is  the  exclusive  property 
of  the  plaintiff." 

Defendant  was  enjoined  against  mis- 
representations in  its  advertisements 
calculated  to  deceive  the  public,  and 
directed  to  attach  a  printed  slip  to 
each  book  sold,  stating  that  it  is  a 
reprint  of  1847  edition,  with  a  Hst  of 
the  additions. 

Court  refers  to  Merriam  v,  Halloway 
Pub.  Co.,  43  Fed.  Rep.  450;  Merriam 
v.  Famous  Shoe,  etc.,  Co.,  47  Fed.  Rep. 
411;  Black  v.  Ehrich,  44  Fed.  Rep.  793. 
See  also  Merriam  v.  Syndicate  Pub. 
Co.,  207  Fed.  515;  appeal  dismissed, 
237  U.  S.  618. 

38  Investor  Publishing  Co.  of  Mass. 
v.  Dobinson,  72  Fed.  603-1896  (C.  C. 
S.  D.  Cal.).  Plaintiff  publishes  "The 
United  States  Investor."  Defendant 
began  to  publish  the  "Investor," 
which  he  stated  to  be  published  by 
the  Investor  Publishing  Company. 
Injunction  was  granted. 


521)    Unfair  Competition  in  Use  of  Literary  Property 


ing,  general  get-up,  title,  etc.,  entirely  aside  from  questions  of 
copyright,^^  on  the  book  or  series  of  books.^^ 


"  Metzler  v.  Wood,  8  Ch.  Div.  606- 
1878.  "Hemy's  Royal  Modern  Tutor 
for  the  Pianoforte"  was  published 
by  plaintiff  and  was  a  most  valuable 
work.  Defendant  employed  Hemy 
to  revise  an  old  work  of  Jousse,  which 
was  published  as  "Hemy's  New  and 
Revised  Edition  of  Jousse's  Royal 
Standard  Pianoforte  Tutor."  The 
two  works  were  similar  in  size  and 
form,  but  the  color  of  the  plaintiff's 
work  was  yellow  and  that  of  the  de- 
fendant's gray.  "When  the  defend- 
ant came  to  print  the  cover,  fair 
trading  required  that  the  exterior 
of  the  work  should  bear  the  name  of 
Jousse  as  the  prominent  word,  and 
that  the  name  of  Hemy  as  editor 
should  be  made  subordinate.  *  *  * 
The  plaintiff's  book  was  no  douht 
commonly  spoken  of  as  '  Hemy's 
Pianoforte  Tutor,'  for  people  in  speak- 
ing of  or  ordering  a  book  do  not  com- 
monly use  tlie  full  title."  Purchasers 
asking  for  plaintiff's  book  had  been 
given  defendant's.  Held  unfair  com- 
petition. Cotton,  L.  J.,  said:  "Any- 
one learning  that  'Hemy's  Pianoforte 
Tutor '  was  the  best  for  beginners,  and 
going  into  a  shop  where  he  was  shown 
the  work  published  by  the  defendant 
would  naturally  say:  'Oh,  this  is  no 
doubt  it,  this  is  Hemy's,  I  will  take 
it.'"  (id.  p.  612). 

Potter  V.  McPherson,21  Hun  (N.  Y.) 
559-1880.  Since  1863,  plaintiffs  made 
"Payson,  Dunton  and  Scribner's 
National  System  of  Penmanship," 
which  became  known  as  the  "Na- 
tional System  of  Penmanship."  De- 
fendants published  "Independent 
National  System  of  Penmanship." 
The  name  and  system  were  never 
copyrighted  or  patented.     Held,  "an 


inspection  of  the  books  discloses  the 
facts  that  they  are  published  sub- 
stantially in  the  same  form  so 
far  as  general  appearance,  bind- 
ing, and  color  of  the  covers  are  con- 
cerned; and  upon  the  cover  of  the 
defendants'  book  the  phrase  'Na- 
tional System  of  Penmanship,'  which 
has  long  been  the  title  of  the  plaintiffs' 
pubUcation,  is  printed  in  the  same 
manner,  the  same  size  and  forms  of 
letters,  and  occupying  the  same  posi- 
tion as  they  do  upon  the  cover  of 
the  plaintiffs'  book.  The  resemblance 
of  the  words  and  letters  composing 
the  phrase  is  as  complete  as  it  could 
well  be  made  and  *  *  *  the  con- 
clusion seems  to  be  well  warranted 
that  *  *  *  it  was  the  result  of  de- 
sign upon  their  part  to  imitate  the 
plaintiffs'  book"  (id.  p.  565).  In- 
junction restraining  use  of  phrase 
"National   System   of  Penmanship." 

Mack  V.  Petter,  L.  R.  14  Eq.  431-33- 
1872.  Plaintiff  published  "The  Birth- 
day Scripture  Te.xt  Book."  Defend- 
ant then  published  "The  Children's 
Birthday  Text  Book."  Romilly,  M. 
R.,  held:  Defendants  "are  not  en- 
titled to  publish  a  work  with  such  a 
title,  or  in  such  a  form  as  to  binding 
or  general  appearance,  as  to  be  a  color- 
able imitation  of  that  of  the  plaintiff." 

^Social  Register  Assii.  v.  Howard, 
60  Fed.  270-1894  (C.  C.  N.  J.).  Com- 
plainant published  in  New  York, 
from  time  to  time,  a  list  of  names  and 
addresses  of  persons  of  social  standing 
in  New  York  and  its  vicinity,  including 
Orange.  This  publication  was  en- 
titled, and  became  well  known  as  the 
"Social  Register."  Held,  that  this 
title  would  be  protected  as  a  trade- 
mark, and  that  defendant  would  be 


Books  and  Book  Titles 


527 


Reprints  and  restatements  of  books  in  other  language  accom- 
panied by  unfair  statements  to  the  effect  that  the  reprint  is 
really  the  original,  will  be  enjoined. ^^ 


enjoined  from  applying  the  name 
"Howard's  Social  Register"  to  a 
similar  list  of  selected  persons  residing 
in  Orange. 

Social  Register  Assn.  v.  Murphy, 
128  Fed.  116-1904  (C.  C.  R. 
I.)  (headnote):  "While  the  words 
'Social  Register,'  adopted  as  the  title 
of  a  series  of  books  containing  lists  of 
persons  selected  by  the  compiler,  may, 
in  association,  constitute  a  trade- 
mark, neither  word  alone  can  be  so 
appropriated,  and  the  fact  that  com- 
plainant published  such  a  book  under 
the  title  'Social  Register,  Newport,' 
does  not  entitle  it  to  enjoin  the  use  by 
defendant  of  the  title  'Newport 
Social  Index'  for  a  similar  publica- 
tion, there  being  no  proof  that  any 
deception  was  intended  or  resulted, 
such  as  to  constitute  unfair  com- 
petition." 

G.  &  C.  Merriam  Co.  v.  Straus, 
136  Fed.  477-1904  (C.  C.  S.  D. 
N.  Y.).  Complainants,  publishers 
of  Webster's  Dictionaries,  charged 
the  defendants,  although  there  was 
no  copyright  infringement,  with  un- 
fair competition  in  the  manner  in 
which  they  had  used  the  word  "Web- 
ster's." "But  there  may  be  a  com- 
mercial property  in  books  as  well  as 
a  literary  property,  and  when  a  pub- 
lisher has  imparted  to  his  books  pe- 
culiar characteristics  which  enable  the 
public  to  distinguish  them  from  other 
books  embodying  the  same  literary 
property,  and  to  recognize  them  as 
his  particular  product,  there  is  no  rea- 
son why  the  principles  which  inter- 
dict unfair  competition  in  trade 
should  not  afford  him  protection 
against  the  copying  of  the  character- 


istics by  rivals"  (per  Wallace,  J.,  at 
p.  479). 

^' Black  V.  Ehrich,  44  Fed.  793- 
1891  (C.  C.  S.  D.  N.  Y.).  Complain- 
ants published  the  "Encyclopaedia 
Britannica"  in  Great  Britain,  and 
put  it  upon  the  American  market 
through  authorized  pubhshers.  De- 
fendant offered  to  the  public  a  cheap 
reprint  of  the  work,  with  the  same 
name  and  the  same  contents,  except 
that  a  few  articles  copyrighted  in  the 
United  States  were  replaced  by  other 
matter.  The  advertisements  repre- 
sented the  work  as  an  American  re- 
print, with  certain  articles  rewritten, 
and  there  was  no  evidence  of  an  at- 
tempt to  mislead  the  public  as  to  the 
identity  of  the  work.  Held,  that  de- 
fendants were  at  liberty  to  publish 
the  volumes  under  the  title  "Ency- 
clopaedia Britannica." 

Harper  &  Bros.  v.  Lare,  103  Fed. 
203-1900  (C.  C.  A.  3d  Cir.)  Com- 
plainant published  a  book  entitled 
"Farthest  North.  Nansen,"  trans- 
lated from  the  Norwegian  original, 
written  chiefly  by  Dr.  Nansen.  De- 
fendants subsequently  published  a 
book  entitled  "The  Fram  Expedition. 
Nansen  in  the  Frozen  World.  Includ- 
ing earlier  Arctic  Explorations,"  which 
contained  part  of  the  same  matter  as 
complainant's  book,  with  a  number 
of  similar  illus'trations.  It  differed 
so  much,  however,  from  complain- 
ant's book,  in  cover  and  title  page, 
that  no  one  of  ordinary  intelligence 
could  mistake  one  for  the  other.  No 
deception  in  advertising  was  shown 
on  defendant's  part.  Held,  no  unfair 
competition. 

Maxwell    v.    Hogg,    L.    R.    2    Ch. 


528    Unfair  Competition  in  Use  of  Liteiiary  Property 


§  278.  Unfair  Competition  in  Connection  with  Plays  and  Play 
Titles.  —  The  copyright  legislation  enacted  in  the  United  States 
does  not  afford  protection  to  the  author  of  a  dramatic  composition 
against  the  use  of  the  title  selected  by  him  by  others  to  designate 
a  different  work.'*"  Accordingly  an  injunction  was  denied  in  an  ac- 
tion brought  under  the  statute  where  the  relief  sought  was  merely 
to  restrain  the  defendant  from  using  a  play-title  where  the  play 
did  not  present  any  scenes,  plot  or  dialogue  taken  from  plain- 
tiff's drama  nor  any  colorable  imitation  thereof.'*^  Where,  how- 
ever, the  title  of  a  play  has  become  closely  associated  in  the 
mind  of  the  public  with  a  certain  author's  work,  indicating  his 
work  and  nothing  else,  the  courts  will  not  permit  another  to 
reap  the  benefits  of  the  first  user's  good-will  by  selecting  as  the 


App.  307-1867.  Hogg,  in  1863, 
registered  an  intended  new  magazine, 
to  be  called  "Belgravia."  He  did 
nothing  further  until  1866  when  Max- 
well, ignorant  of  what  Hogg  had  done, 
projected  a  magazine  with  the  same 
name,  incurred  considerable  expense 
in  preparing  it,  and  during  August  and 
September  advertised  it  extensively  as 
about  to  appear  in  October.  Hogg 
then  hastily  prepared  to  bring  out 
his  own  magazine  before  Maxwell's 
could  appear,  and  published  it  Septem- 
ber 25th.  Maxwell's  magazine  ap- 
peared in  October.  Hogg  had  given 
Maxwell  no  notice  or  caution  prior  to 
September  2oth,  and  had  even  ac- 
cepted from  Maxwell  an  advertise- 
ment of  Maxwell's  magazine  to  ap- 
pear in  publications  of  Hogg.  Held, 
that  Maxwell's  advertisements  and 
expenditure  gave  him  no  exclusive 
right  to  use  the  name  "Belgravia," 
and  that  Hogg,  on  the  other  hand, 
had  acquired  no  such  right  by  what 
he  had  done,  and  that  neither  party 
was  entitled  to  an  injunction  as 
against  tlie  other. 

Estes  V.  Worthington,  31  Fed. 
154-1887  (C.  C.  S.  D.  N.  Y.). 
Plaintiff    was    the    American    pub- 


lisher of  an  annual  series  of  ju- 
venile books,  which  had  for  many 
years  been  widely  known  and  popu- 
lar under  the  name  "Chatterbox." 
The  books  were  marked  by  distinc- 
tive characteristics  as  to  cover,  print- 
ing, etc.  Defendant  pubhshed  vari- 
ous juvenile  books  bearing  upon  the 
covers  the  title  "Chatterbox,"  and 
simulating  in  appearance  and  deco- 
ration the  series  published  by  plain- 
tiff. Held,  that  defendant  was  not 
entitled  to  the  use  of  the  title  for 
such  books,  especially  when  coupled 
with  an  imitation  of  the  general  ap- 
pearance of  the  books. 

Estes  V.  Leslie,  27  Fed.  22-1886 
(C.  C.  S.  D.  N.  Y.).  Complainants  had 
the  American  rights  for  an  English 
series  of  juvenile  books  called 
"Chatterbox."  Defendants  published 
books  under  the  name  "Frank  Leslie's 
Chatterbox,"  employing  the  same 
method  of  selection  and  illustration, 
square  form  and  style  of  binding,  and 
vignette.  Injunction  granted  against 
defendants. 

*°CorbeU  v.  Purdy,  80  Fed.  901; 
Osgood  V.  Allen,  1  Holmes,  185;  18 
Fed.  Cas.  No.  10,603. 

^'  Harper  v.  Ranous,  67  Fed.  904. 


Plays  and  Play  Titles 


529 


title  of  his  work  the  title  made  famous  by  the  first  user.  The 
ordinary  principles  of  unfair  competition  apply  to  such  a  case, 
equity  granting  injunctive  relief. "^    Where  the  name  chosen  as 


^'^  Aronson  v.  Fleckenstein,  28  Fed. 
75. 

Action  to  restrain  the  defendants 
from  producing  an  operetta  known 
as  "Erminie."  Bil!  alleged  that  the 
complainant  acquired  the  exclusive 
right  to  produce  in  the  United  State 
the  operetta  known  as  "Erminie"; 
that  the  play  was  produced  with  great 
success  in  New  York  by  complainant, 
and  the  title  "Erminie"  had  been 
copyrighted  under  the  laws  of  the 
United  States. 

That  the  defendant  was  about  to 
produce  an  operetta  advertised  as 
"Erminie"  in  contravention  to  the 
complainant's  right.  Before  the  com- 
plainant acquired  his  rights,  the  songs 
and  vocal  score  were  published  in 
England  and  United  States  with  the 
consent  of  the  owners,  but  the  orches- 
tration and  orchestra  parts  and 
libretto  of  the  operetta  had  never 
been  published. 

Complainant's  operetta  was  founded 
upon  a  well-known  drama,  but  had 
been  freely  adapted.  The  defendant's 
operetta  was  founded  upon  the  same 
well-known  drama.  The  court  in 
granting  an  injunction  said: 

"I  think  the  proof  now  before  the 
court  shows  that  the  name  'Erminie,' 
as  applied  to  an  operetta,  originated 
with  the  authors  of  complainant's 
operetta;  and  that,  by  the  publication 
of  the  songs  and  vocal  score  of  the 
operetta,  they  have  not  given  to  the 
pubUc  the  right  to  use  the  name  as 
applied  to  any  other  libretto,  dialogue, 
and  orchestra  parts;  that  the  publica- 
tion of  the  songs  only  gave  to  the  pub- 
lic that  which  was  published,  and 
does   not   authorize   the   use  of   the 


name  as  applied  to  the  operetta  as  a 
whole. 

"The  case,  as  now  made  by  the 
proof,  shows  an  attempt  by  defend- 
ants to  avail  themselves  of  the  reputa- 
tion and  popularity  which  has  been 
achieved  by  the  operetta  of  Erminie, 
as  exclusively  owned  and  produced 
by  complainant,  by  bringing  out  a 
piece  with  the  same  name  and  songs, 
but  with  colorable  changes  in  the 
text  of  the  dialogue  and  dramatic 
arrangement.  The  Poulton  operetta, 
with  the  name  of  Erminie,  being  so 
far  an  original  composition  as  to  en- 
title it  to  protection  as  a  piece  of 
literary  property,  the  name  given 
the  composition  by  its  author,  and 
under  which  it  has  become  known  to 
the  public,  became,  as  it  seems  to 
me,  a  property  right,  —  not  strictly 
on  the  principle  of  a  trade-mark,  but 
because  the  name  and  literary  com- 
position became  blended  and  united, 
so  that  the  name  identifies  the  com- 
position to  the  public,  —  so  that  the 
name  of  this  composition  belongs  to 
this  complainant  as  identifying  and 
describing  his  Uterary  property,  and 
as  a  part  of  the  piece  itself,  and  de- 
fendants have  no  right  to  profit  by 
using  this  name  to  the  injury  of  the 
complainant. 

"  The  law  is  now  too  well  settled  to 
require  the  citation  of  authorities, 
that  the  playing  of  a  dramatic  com- 
position is  not  such  a  pubh  cation  as 
makes  the  composition  public  prop- 
erty; and  I  think  it  equally  clear  that 
an  author  who  has  given  a  particular 
title  or  name  to  his  composition  is 
entitled  to  have  that  name  protected. 
The  proof  shows  that  complainant  has 


530    Unfair  Competition  in  Use  of  Literary  Property 


the  title  of  a  play  is  a  word  in  common  use  and  not  ordinarily 
susceptible  to  exclusive  appropriation  it  would  seem  that  the 


put  his  play  before  tlic  public  in  New 
York  City,  and  that  it  has  there  met 
with  such  approval  as  makes  it  prob- 
able, if  not  certain,  that  the  piece  will 
have  a  successful  run  in  the  other 
cities  and  towns  of  this  country;  and 
defendants  have  no  right  to  avail 
themselves  of  the  merits  and  popu- 
larity of  complainant's  play  to  draw 
audiences  to  the  performance  of 
theirs,  even  if,  as  is  claimed,  their 
composition  is  a  new  and  original 
dramatic  arrangement.  It  is  a  fraud 
upon  the  public,  as  well  as  upon  the 
complainant,  to  attempt  to  do  so." 

Hopkins  Amusemeyit  Co.  v.  Froh- 
man,  202  III.  541.  The  court  enjoined 
the  defendant  from  using  the  name 
"Sherlock  Holmes,  Detective,"  in 
connection  with  the  production  and 
performance  of  a  plaj',  as  infringing 
the  rights  of  the  plaintiff,  who  was 
producing  a  play  under  the  name 
"Sherlock  Holmes."  Justice  Bogges 
said: 

"The  name  given  to  the  drama 
advertised  to  be  performed  by  the 
appellant  company  and  that  borne 
by  the  play  of  the  appellee  are  so 
similar  that  the  likehhood  is  that  the 
public  would  be  deceived  to  believe 
that  the  drama  of  the  appellant  com- 
pany was  that  which  the  appellee  had 
been  producing.  This  Ukelihood  of 
deception  is  declared  to  be  the  test  in 
Hopkins  on  Unfair  Trade  (p.  186),  and 
the  same  author  there  remarks  that  in 
applying  this  test  all  doubts  are  to  be 
resolved  in  favor  of  the  complain- 
ant.   *    *    * 

"The  decree  is  to  be  sustained,  not 
upon  the  principal  theory'  upon  which 
the  appeal  was  framed,  that  the  ap- 
pellee has  an  exclusive  property  right 


in  the  name  'Sherlock  Holmes'  as  a 
trade-mark,  but  upon  the  ground  that 
it  appeared  from  the  allegations  of 
the  bill,  independently  of  any  of  the 
allegations  with  reference  to  the  al- 
leged trade-mark  rights  of  the  ap- 
pellee, that  the  appellant  company 
adopted  and  used  the  words  '  Sherlock 
Holmes,  Detective,'  as  the  name  of 
the  play  intended  to  be  produced  by 
it,  in  a  manner  calculated  to  deceive 
the  public  and  with  the  intent  to  lead 
the  public  to  believe  that  it  would 
perform  the  drama  which  the  appellee 
had  made  well  known  and  popular, 
and  thereby  not  only  to  deceive  the 
public  but  to  injure  the  appellee." 

Frohman  v.  Payton,  .34  Misc.  (N.  Y.) 
275.  Motion  for  an  injunction  pendente 
lite. 

The  plaintiff,  a  theatrical  manager, 
purchased  the  sole  right  to  produce 
in  the  United  States  a  play  entitled 
"L'Aiglon,"  and  caused  the  same  to 
be  produced  upon  the  stage,  where  it 
achieved  unusual  success.  The  de- 
fendant, the  proprietor  of  a  theatre  in 
Brooklyn,  announced  the  production 
of  a  play  in  his  theatre  entitled 
"L'Aiglon."  The  court  in  granting 
the  relief  applied  for  said : 

"It  must  be  inferred  from  the 
moving  papers  that  the  defendant's 
purpose  in  appropriating  the  name 
of  the  plaintiff's  organization  to  the 
play  to  be  produced  by  said  de- 
fendant is  to  secure  to  himself  the 
eclat  and  benefit  of  plaintiff's  meri- 
torious and  well  known  advertised 
organization  a  feature  which  gives 
rise  to  equitable  relief.  The  question 
'What's  in  a  Name?'  has  been  an- 
swered by  the  courts  in  many  well 
considered  cases,  wherein  the  exclu- 


Plays  and  Play  Titles 


531 


sive  right  to  a  name  possessed  or 
owned  by  a  successful  business  enter- 
prise has  been  maintained  against 
imitators,  and  wrongdoers,  who  sought 
by  an  unauthorized  use  to  deceive 
the  pubhc  and  profit  by  the  wrong." 

Frohman  v.  Morris,  Inc.,  68  Misc. 
(N.  Y.)461.  Motion  for  an  injunction 
pendente  life. 

The  plaintiffs  acquired  from  the 
author  the  sole  rights  to  produce  the 
play  "Chantecler"  in  English  in  the 
United  States.  The  play  was  copy- 
righted in  the  United  States  in  April, 
1910.  The  play  was  first  produced 
in  Paris,  France,  in  1910.  For  several 
years  prior  to  its  first  production,  the 
title  and  subject-matter,  particularly 
the  fact  that  every  character  was  to 
represent  a  barnyard  fowl  or  animal 
had  been  published  and  announced. 
In  August,  1909,  a  dramatic  piece  in 
the  nature  of  a  burlesque  was  pro- 
duced in  Paris  under  the  name  "Chan- 
ticlair."  The  defendant  acquired  by 
purchase  the  sole  right  to  produce 
"  Chanticlair "  in  the  United  States. 
Upon  the  argument  the  plaintiffs 
withdrew  their  demand  for  an  injunc- 
tion against  the  continued  perform- 
ance of  the  piece  itself,  but  they  insist 
that  the  defendant  should  be  en- 
joined from  producing  it  under  the 
name  ''Chanticlair."  Giegerich,  J., 
said: 

"I  base  my  conclusion  that  an  in- 
junction should  issue  upon  the  ground 
that  upon  the  situation  shown  in  the 
affidavits,  the  public  will  be  deceived 
and  misled  if  two  performances  under 
the  same  name,  each  having  as  its 
characters  barnyard  animals,  are  pro- 
duced simultaneously  in  this  city. 
It  may  be,  as  stated  in  the  opposing 
affidavits,  that  the  character  of  the 
two  performances  is  wholly  different, 
the  one   being   serious   and   artistic, 


while  the  other  is  a  burlesque;  and  it 
is  also  doubtless  true  that  no  one  in- 
tending to  witness  the  plaintiffs'  play 
could  possibly  mistake  the  defend- 
ants' performance  for  it.  But  this 
power  to  distinguish  would  not  save 
the  playgoer  who  had  gotten  into  the 
wrong  theatre.  His  money  would 
have  been  paid  and  his  evening  would 
have  been  irretrievably  lost.  It  is 
manifest  also  that  confusion  and 
errors  would  arise  in  ordering  and  pur- 
chasing tickets  in  advance,  and  that 
great  vexation,  inconvenience  and 
loss  would  come  to  the  general  public 
from  the  concurrent  production  of 
two  such  plays  under  the  same  name. 
On  behalf  of  the  defendants  it  is  ar- 
gued that  the  first  actual  production 
of  the  play  under  the  name  in  ques- 
tion was  made  by  persons  in  Europe, 
from  whom  the  defendants  have  ob- 
tained their  right ;  but  I  cannot  regard 
this  circumstance  as  conclusive  upon 
the  rights  of  the  parties.  At  the  time 
such  production  was  made  and  for 
months  and  years  before  that,  the 
fact  that  Mr.  Rostand  had  written 
a  play  under  this  title  and  was  about 
to  produce  it,  and  the  general  charac- 
ter and  plan  of  the  play  had  become 
well  known  to  the  public  in  Europe 
and  elsewhere;  and,  owing  to  the 
eminence  of  the  playwright  and  the 
success  of  his  former  productions  and 
the  unique  character  of  his  latest  ef- 
fort, the  interest  in  the  forthcoming 
performance  was  widespread  and  in- 
tense. No  claim  is  made  in  the  op- 
posing affidavits  that  the  title 
'Chanticlair'  was  not  adopted  by  the 
author  of  the  defendants'  play  with 
full  knowledge  of  what  Mr.  Rostand 
had  done.  Under  such  circumstances 
I  do  not  think  it  should  be  held  that 
the  one  who  was  prior  in  time  in  ac- 
tuall}'^  producing  something  upon  the 


532    Unfair  Competition  in  Use  of  Literary  Property 


fraud  of  the  person  subsequently  appropriating  the  title  should 
be  clearly  shown  to  entitle  a  person  to  an  injunction.'*^  Mere 
similarity  in  titles  of  plays  is  not  sufficient  ground  for  granting 
relief;  the  similarity  must  be  so  great  that  the  ordinary  person 
will  be  deceived.'^ 

A  motion  picture  production  is  so  closely  related  to  the  spoken 
stage  is  stronger  in  right.    In  equity      right  for  three  years  to  produce  within 


the  right  belongs  to  tlie  eminent  author 
whose  talent  and  reputation  created 
the  extraordinary  interest  of  which 
the  defendants  and  their  assignors 
have  sought  to  reap  the  benefit." 

^3  Isaacs  V.  Daly,  39  N.  Y.  Superior 
Ct.  511. 

Plaintiff  copyrighted  a  play  called 
"Charity"  in  Dec,  1873.  In  January, 
1874,  defendant  bought  an  entirely 
different  play  also  called  "Charity." 

In  denying  a  motion  for  an  injunc- 
tion, Curtis,  J.,  said: 

"It  is  not  alleged  that  there  has 
been  any  bad  faith  on  either  side. 
The  complication  appears  to  be  purely 
accidental."     *     *     * 

"  The  law  favors  hterature  and  art, 
and  while  it  seeks  to  protect  all  in  the 
enjoyment  of  their  property  and  their 
rights,  it  does  not  limit  and  abridge 
the  field  of  occupation  and  enterprise. 
The  use  of  the  word  'Charity'  as  a 
designation  for  any  work  of  art  or 
literature  can  not  ordinarily  be  monop- 
olized by  any  one  person.  There  may 
be  occasions  when  a  title  is  made  use 
of  in  bad  faith,  or  to  promote  some 
imposition,  or  to  inflict  a  wrong,  when 
a  court  of  justice  should  interfere  to 
prevent  its  use,  or  to  compensate  a 
party  who  has  in  consequence  sus- 
tained an  injury.  But  the  present 
case  does  not  appear  to  be  one  where 
the  court  is  called  upon  to  interfere 
for  any  of  these  reasons." 

**  Frohman  v.  Miller,  8  Misc. 
379. 

The  plaintiff  acquired  the  exclusive 


the  United  States  and  Canada  a  play 
called  "Charley's  Aunt."  In  calling 
the  attention  of  the  public  to  it  he 
used  a  picture  of  a  laughing  cat.  The 
defendant  produced  a  play  in  New 
York  entitled  "Charley's  Uncle,"  and 
advertised  the  same  by  means  of 
posters  and  display  sheets  in  imitation 
of  the  manner  and  style  in  which 
"Charley's  Aunt"  had  been  adver- 
tised. In  place  of  a  cat  the  defendant 
inserted  an  owl. 

The  court  refused  an  injunction 
restraining  the  defendant,  and  said: 
"While  there  is  no  doubt  as  to  the 
power  of  the  court  to  enjoin  the  use 
of  a  title  calculated  to  deceive  the 
public  into  the  belief  that  the  defend- 
ants were  performing  the  plaintiff's 
play,  the  question  is  whether  the 
title  '  Charley's  Uncle '  is  so  similar  to 
'Charley's  Aunt'  as  to  induce  the 
public  to  take  the  former  for  the  latter. 
*  *  *  It  cannot  be  urged  that 
the  plaintiff,  even  if  he  had  copy- 
righted the  title  'Charlej^'s  Aunt,' 
could  have  extended  his  right  to  liter- 
ary protection  to  all  the  relatives  of 
Charley's  family,  for  it  must  have 
been  known  to  the  plaintiff  that  this 
Charley,  like  every  other  individual, 
was  apt  not  only  to  have  aunts,  but 
uncles,  brothers,  sisters,  cousins,  and 
perhaps  a  mother-in-law  and  a  grand- 
father. Nor  would  it  be  seriously 
contended  that  by  adopting  '  Charley's 
Aunt'  as  the  title  to  this  play  he 
monopolized  the  right  to  all  the  other 
relatives." 


Plays  and  Play  Titles 


533 


drama  that  in  a  proper  case  an  injunction  will  lie  restraining  the 
producer  of  a  photo-play  from  assuming  the  title  of  a  well-known 
drama  for  use  in  connection  with  his  photo-play.'*^ 

A  similar  case  has  arisen  in  France  where  it  was  held  that  the 
title  of  a  drama,  "Les  Deux  Gosses"  could  not  be  used  for  a 
photo-play,  even  though  it  had  no  point  of  resemblance  with 
the  drama.  "^^ 

Where  two  authors  make  separate  dramatizations  of  an  un- 


*6  Paul  Dickey  v.  Mutual  Film  Cor- 
poration, 160  N.  Y.  Sup.  609  (1916), 
6  Trade  Mark  Rep.  423.  Action  for 
injunction  and  accounting.  Plain- 
tiff, a  dramatic  writer,  wrote  a  one- 
act  play  called  "The  Come-Back" 
which  was  produced  in  1911.  In 
June,  1915,  the  defendant  pro- 
duced a  photo-play  entitled  "The 
Come-Back."  The  story  of  the  play 
and  photo-play  were  not  similar,  the 
sole  similarity  being  in  the  title. 

The  court  granted  the  relief  de- 
manded, saying: 

"I  shall  hold  that  although  not 
now  actually  being  produced,  plain- 
tiff's play  is  sufficiently  of  value  to 
be  the  subject  of  loss  from  competi- 
tion, and  that  the  name  'The  Come- 
Back'  is  not  descriptive  but  fanciful, 
and  therefore  subject  in  a  proper 
case  to  the  protection  of  an  equity 
court.  In  the  first  place  I  do  not 
think  that  the  prior  copj'right  of  two 
dramatic  compositions  under  a  similar 
name  affects  plaintiff's  rights.  The 
title  not  being  subject  to  copyright, 
its  use  is  protected  under  the  equi- 
table rule  applicable  to  trade-marks; 
that  is,  priority  of  actual  use  gives 
priority  of  right  to  use  and  to  protec- 
tion. {Columbia  Mill  Co.  v.  Alcorn, 
150  U.  S.  460,  463.)  Defendant's 
chief  defense  is  that  the  case  is  merely 
one  of  coincidence,  and  that  not  every 
case  of  coincidence  is  unfair  competi- 
tion, at  least  in  the  absence  of  fraudu- 


lent intent.  I  do  not  think  that 
fraudulent  intent  is  involved  in  this 
case.  It  is  true  that  coincidence  in 
title  is  not  per  se  unfair  competition, 
as  witness  numerous  cases  cited  by 
the  defendant,  beginning  with  the 
Apthorp  case,  Astor  v.  West  82d  St. 
Realty  Co.  (167  App.  Div.  273). 
These  cases,  as  I  read  them,  are  de- 
cided on  the  ground  that  no  competi- 
tion exists." 

Klaw  v.  General  Film  Co.,  154 
N.  Y.  Supp.  988-1915. 

The  plaintiffs  produced  a  play 
under  the  title  "A  Fool  There  Was" 
with  great  success.  Large  sums  of 
money  were  expended  for  hiring  actors 
and  actresses,  equipping  the  play  and 
advertising  it.  After  the  play  ac- 
quired a  reputation  the  defendant 
produced  a  photo-play  under  the 
same  title. 

The  court  held  the  plaintiffs  estab- 
lished and  acquired  an  exclusive  pro- 
prietary right  as  a  trade  name  and 
trade-mark  in  the  words  "A  Fool 
There  Was"  as  a  title  \^  connection 
with  their  play,  and  were  entitled  to 
a  permanent  injunction  restraining 
the  defendant  from  the  continuance 
of  the  infringement  and  impairment 
of  their  right  to  such  trade-mark  or 
trade  name. 

«"  Pouillet :  "Traits  des  Marques  de 
Fabrique"  1247  (Trib.  civ.  Seine,  27 
dec.  1906,  Decourcelle,  Gaz.  Trib.,  26 
fev  1907). 


534    Unfair  Competition  in  Use  of  Literary  Property 


copyrighted  novel  each  has  the  right  to  entitle  his  play  from  the 
story  from  which  the  plays  were  taken,  particularly  if  each  author 
makes  public  announcement  that  he  is  the  author  of  his  play/*^ 

The  author  or  proprietor  of  a  dramatic  composition  which  is 
produced  by  well-known  actors,  cannot  restrain  other  actors 
from  imitating  in  public  the  postures  and  dances  of  the  actors  of 
his  production. '''' 


«  Olaser  v.  St.  Elmo  Co.,  175  Fed. 
276. 

Augusta  J.  Evans  wrote  a  novel 
which  she  named  "St.  Elmo,"  and 
for  which  a  copyright  was  taken  out. 
Just  before  the  expiration  of  the  copy- 
right of  the  novel,  a  dramatization  of 
the  novel  was  made,  and  a  copyright 
procured  for  the  play  under  the  same 
title  as  the  novel  "  St.  Elmo."  On 
the  expiration  of  the  copyright  of  the 
novel,  the  defendant  Neil  Twomey 
wrote  a  play  based  on  the  incidents 
of  the  novel  and  called  it  "St.  Elmo." 
This  was  a  motion  for  a  preliminary 
injunction  to  restrain  the  production 
of  the  defendant's  play  under  the 
name  "St.  Elmo."  It  was  held  that 
the  preliminary  injunction  should  be 
denied. 

"It  is  claimed  by  the  complain- 
ants in  this  case  that  the  defend- 
ants' adoption  of  the  title  "St. 
Elmo"  for  their  play,  and  their  pro- 
duction of  the  play  with  such  a  title, 
constitutes  unfair  competition  in  trade, 
but  I  doubt  whether  this  doctrine 
applies  in  the  case  of  plays  made 
from  novels  the  copyright  of  which  has 
expired.  Suppose  that  two  plays  were 
written  based  on  an  old  novel,  for  in- 
stance, Don  Quixote,  or  Clarissa  Har- 
low, or  Quentin  Durward,  and  that 
both  such  plays  were  given  the  title 
(jf  the  story  from  which  they  were 
taken.  Would  not  the  author  of 
each  play  have  the  right  to  give  his 
play  the  name  of  the  novel  on  which 


it  was  based,  particularly  if  each  made 
proper  public  announcement  that  he 
was  the  author  of  that  play?  *  *  * 
In  this  case  upon  all  the  advertise- 
ments and  notices  of  their  play  put 
out  by  the  defendants,  they  pub- 
lished the  fact  that  it  was  written 
by  Neil  Twomey,  and  I  think  that 
the  proof  shows  that  if  the  principle 
announced  in  the  case  of  Singer  Mfg. 
Co.  V.  Jxme  Mfg.  Co.,  is  applicable 
to  the  case  of  a  copyright,  the  rule 
there  laid  down  has  been  complied 
with  by  the  defendants." 

"  Savage  v.  Hoffman,  159  Fed.  Rep. 
584.  On  motion  to  continue  the  re- 
straining order. 

The  complainant  alleged  that  he 
owned  the  exclusive  right  of  produc- 
ing an  opera  under  the  title  "The 
Merry  Widow,"  and  was  producing 
the  same.  It  was  shown  that  the 
defendants  were  giving  a  series  of 
imitations  in  a  vaudeville  perform- 
ance, one  of  which  consisted  of  the 
defendant  and  her  assistant  dancing 
in  imitation  of  two  of  the  characters 
in  the  complainant's  production. 
Ward,  C.  J.,  said: 

"The  complainant  asks  that  the 
defendant  be  restrained  from  imitat- 
ing the  postures  of  Barbanell  and 
Brian,  from  singing  the  song  called 
'  Maxim's,'  and  from  using  the  or- 
chestration of  'The  Merry  Widow.' 
Obviously  the  complainant  has  no 
literary  property  in  the  manner  in 
which  Barbanell  and  Brian  dance  or 


Names  of  Newspapers  and  Magazines 


535 


The  publication  or  production  of  a  play  by  one  not  entitled  to 
use  its  name  or  its  subject-matter  will  be  enjoined  on  the 
ground  that  both  the  rightful  owner  and  the  public  are  entitled 
to  protection  against  spurious  plays,  viz.,  which  are  represented 
to  be  what  they  are  not."^^ 

§  279.  Names  of  Newspapers  and  Magazines.  —  Most  of  the 
litigation  involving  title  to  newspaper  names  arises  because  of 
the  fact  that  the  full  name  of  a  paper  is  seldom  used  in  speaking 
of  it.  "The  New  York  Evening  Post "  and  "The  Saturday  Even- 
ing Post"  are  referred  to  merely  as  "The  Post."  In  London 
and  New  York  "The  Times"  is  well  known,  yet  the  person  using 
the  term  in  one  city  does  not  mean  what  is  commonly  meant  by 
the  same  name  in  the  other  city.  The  "London  Times"  could 
not  restrain  the  publishing  of  a  "Newcastle  Times"  or  a  "Bristol 
Times"  in  those  towns.  Yet  it  could  doubtless  restrain  a  rival 
from  setting  up,  at  London,  a  competing  paper  as  "The  London 
Morning  Times."  For  instance,  to  start  "The  Grocer"  when  the 
"American  Grocer"  was  being  published  and  was  commonly 
known  as  "The  Grocer"  was  held  unfair. ^^ 


posture.  They,  if  any  one,  have 
the  right  to  complain.  The  manner 
and  method  of  every  dancer  and 
actor  is  individual,  and  utterly  unlike 
the  railroad  scene,  which  was  held 
the  subject  of  literary  property  in 
Daly  V.  Palmer,  6  Blatchf.  256,  Fed. 
Cas.  No.  3,552." 

*^  Hopkins  Amusement  Co.  v.  Froh- 
man,  103  III.  App.  613-1902. 

'^^  American  Grocer  Publishing  Assn. 
V.  The  Grocer  Publishing  Co.,  25  Hun 
(N.  Y.) ,  398-1881 .  Plaintiff  for  many 
years  had  published  the  "American 
Grocer,"  which  was  known  commonly 
as  the  "Grocer."  In  1875,  its  editor 
resigned  and  started  "The  Grocer" 
on  the  same  block  in  New  York  on 
same  side  of  the  street.  Later  the 
plaintiff  moved  and  the  defendant  did 
likewise,  to  the  same  block  as  plaintiff 
again.  Held  that  decision  below  re- 
fusing injunction  was  error. 

Walter  v.  Emmot,  54  L.  J.  (Ch.)  N.  S. 


1059-1885.  "The  Evening  Mail"  be- 
gan to  be  published  in  1789,  and  in 
1868  the  name  was  changed  to  "The 
Mail."  The  defendant  began  to  pub- 
lish "The  Morning  Mail"  in  1885. 
Plaintiff  alleged  that  defendant's  paper 
would  soon  become  "The  Mail,"  and 
had  already  begun  to  be  so  called,  and 
hence  the  public  would  be  misled  to 
the  injury  of  plaintiff.  Evidence  of 
letters  and  businass  intended  for 
plaintiff,  which  had  gone  to  defend- 
ant, was  admitted,  and  other  evidence 
of  confusion.  Held:  "It  is  not  a  ques- 
tion of  property;  it  is  the  question 
whether  what  has  been  done  by  the 
defendant  is  in  reason  calculated  to 
induce  people  to  take  his  goods  as 
those  of  the  plaintiff,  or,  in  other 
words,  to  pass  off  his  goods,  whatever 
they  may  be,  as  the  goods  of  the 
plaintiff"  (id.  p.  1061).  Lord  Lindley 
said:  "The  name  of  a  paper  is  a  very 
valuable  property.    There  is  no  doubt 


530    Unfair  Competition  in  Use  of  Literary  Property 


The  rules  which  apply  to  such  cases  are  very  similar  to  those 
applied  to  others  spoken  of  in  connection  with  trade  names;  and 


about  that;  but  it  is  property  of  a  very 
peculiar  kind.  The  owner  of  a  news- 
paper has  not  a  copyright  in  the  name, 
and  wliat  is  quite  as  important  in  a 
legal  point  of  view  as  the  name,  is  that 
to  which  the  name  is  annexed  and 
which  that  name  denotes.  Take  the 
expression  'The  Mail'  or  'The  Times,' 
there  is  no  copyright  in  that  expres- 
sion, and  the  same  words  may  be  used 
witli  perfect  impunity  with  reference 
to  other  matters,  or  in  other  places 
where  there  is  no  possibility  of  infring- 
ing anything  like  a  trade-mark." 

Clement  v.  Maddick,  5  Jur.  N.  S.  592- 
1859.  The  proprietor  of  "Bell's  Life  in 
London  and  Sporting  Chronicle"  ob- 
tained an  injunction  restraining  the 
proprietors  of  the  "Penny  Bell's  Life 
and  Sporting  News"  from  using  any 
title  which  included  "Bell's  Life,"  by 
which  name  the  complainant's  paper 
was  known  familiarly.  "Suburban 
Life,"  a  magazine  pubUshed  at  New 
York  and  circulating  in  Philadelphia, 
was  protected  by  injunction  against 
"Philadelphia  Suburban  Life,"  a  sim- 
ilar magazine  afterwards  published, 
there  being  a  close  resemblance  in  the 
general  appearance  of  the  two  maga- 
zines. Suburbun  Press  v.  Philadelphia 
Suburban  Pubg.  Co.,  227  Pa.  148-1910. 

Commercial  Advertiser  Assn.  v. 
Haijnes,  49  N.  Y.  Supp.  938-1898 
(headnote):  "A  newspaper  will  not 
be  restrained  from  using  the  name 
'New  York  Commercial,'  in  con- 
nection with  a  vignette  between 
the  words  'York'  and  'Commercial' 
and  with  another  title  in  conspicuous 
letters  immediately  beneath  the  name, 
because  of  its  similarity  to  the  name  of 
a  newspaper,  '  The  Commercial  Adver- 
tiser,'  where  the  type  and   arrange- 


ment are  dissimilar;  where  one  is  an 
evening  paper,  devoted  to  general 
news,  and  the  other  is  a  morning 
paper,  which  confines  itself  to  com- 
mercial, financial,  and  shipping  news, 
and  the  price  is  different;  where  the 
only  evidence  of  injury  is  that  or- 
ders for  advertising  intended  for 
plaintiff  are  frequently  addressed  to 
the  'Commercial,'  and  that  other  pa- 
pers in  quoting  from  plaintiff's  paper 
frequently  give  credit  to  the  'New 
York  Commercial;'  and  where  the 
only  evidence  of  injury  consists  in 
expressions  of  opinion,  which  are 
controverted  by  other  witnesses,  — 
since  the  facts  do  not  justify  the  con- 
clusion that  the  use  of  the  name  by 
the  defendant  is  calculated  to  deceive 
any  purchaser  or  advertiser  of  com- 
mon intelligence." 

Bell  V.  Locke,  8  Paige  (N.  Y.), 
74-1840.  Plaintiff  published  a  paper 
entitled  the  "Democratic  Republi- 
can New  Era."  Defendant  had 
formerly  been  associated  with  plain- 
tiff in  the  issue  of  a  paper 
called  the  "New  Era,"  but  its  pub- 
lication for  more  than  a  year  and  a 
half  had  been  discontinued.  De- 
fendant now  began  to  publish  a  paper 
called  the  "New  Era,  revived  by 
Richard  Adams  Locke,  its  original 
editor."  The  device  or  emblem  at 
the  head  of  defendant's  paper  dif- 
fered considerably  from  that  on  the 
plaintiff's  paper.  Held,  that  there  was 
no  such  probability  of  deception  as  to 
entitle  plaintiff  to  restrain  defendant 
from  publishing  his  paper  under  the 
title  "New  Era." 

Forney  v.  Engineering  News  Pub- 
lishing Co.,  10  N.  Y.  Supp.  814- 
1890.     Plaintiff  published  a  monthly 


Names  of  Newspapers  and  Magazines 


537 


periodical  of  limited  circulation 
called  "The  Railroad  and  Engi- 
neering Journal,"  resulting  from  the 
consolidation  of  the  two  period- 
icals, one  of  which  was  known  as  "The 
American  Railroad  Journal."  Plain- 
tiff's periodical  was  sometimes  called 
"Forney's  Railroad  Journal."  De- 
fendant published  a  weekly  periodical 
which,  after  several  changes,  was 
called  "Engineering  News  &  American 
Railway  Journal."  The  abbreviated 
title  "Engineering  News"  was  used  on 
letter-heads  and  was  the  title  by  which 
the  paper  was  ordinarily  known.  Held, 
that  in  the  absence  of  evidence  that 
actual  confusion  resulted,  plaintiff 
was  not  entitled  to  restrain  defendant 
from  using  the  words  "Railway 
Journal." 

Borthivick  v.  Evening  Post,  37  Ch. 
Div.  449-1888.  Plaintiff  owned 
the  "Morning  Post";  defendant 
the  "  Evening  Post."  Action  brought 
to  restrain  defendant  from  the  use 
of  the  word  "Post"  or  any  title  of 
which  that  word  formed  a  part.  The 
papers  were  different  in  many  respects. 
Defendant  gave  evidence  that  the 
word  "Post"  had  been  applied  to 
newspapers  frequently  in  the  past  in 
England.  The  "  Morning  Post  "  was 
established  in  1772.  There  was 
evidence  of  several  cases  of  actual 
deception.  Perpetual  injunction 
granted  restraining  the  defendant 
from  using  the  words  "Evening 
Post."  On  appeal,  this  judgment  was 
reversed,  the  court  holding  that  they 
are  asked  to  draw  the  inference  that 
the  defendant  assumed  the  name 
"Post"  with  the  intention  of  obtain- 
ing part  of  the  trade  of  the  plaintiff 
from  the  fact  that  there  have  been  ap- 
plications to  the  "  Morning  Post  "  for 
twenty  copies  of  the  "  Evening  Post," 
but  there  is  no  evidence  that  a  single 


copy  less  of  the  "  Morning  Post  "  has 
been  sold  by  reason  of  the  defendant's 
action.  Held,  that  this  was  not 
enough  to  warrant  the  interference  of 
the  court.  The  court  also  put  its 
decision  on  the  ground  that  the  two 
papers  were  not  competing  papers, 
inasmuch  as  one  was  a  morning  and 
the  other  an  evening  paper;  that  the 
get-up  of  the  papers  were  different, 
and  the  court  should  l^e  satisfied  that 
the  pocket  of  the  plaintiff  will  be 
injured  before  they  granted  an  in- 
junction. 

In  Gannett  v.  Ruppert,  119  Fed. 
221  (reversed  on  facts,  127  Fed.  962), 
Hazel,  C.  J.,  said: 

"It  has  been  repeatedly  held  by 
the  Courts  of  the  United  States,  and 
of  the  State  of  New  York,  that  there 
is  a  property  right  in  a  name  which 
may  be  protected  by  a  court  of  equity. 
Complainant  is  entitled  to  his  trade- 
name as  applied  to  his  periodical,  and 
may  avail  himself  of  the  same  reme- 
dies to  enforce  his  rights  that  are  open 
to  a  tradesman  whose  goods  have 
become  distinctively  known  to  the 
public  by  the  use  of  a  technical  mark 
or  name  which  differentiates  them 
from  the  goods  of  another  of  like 
kind.  Sebastian,Trade- Marks,  Fourth 
Ed.  291.  The  foundation  of  com- 
plainant's claim  lies  in  priority  of 
appropriation,  and  exclusive  right 
to  a  trade  name  as  applied  to  a  publi- 
cation. A  trade-mark  as  applied  to 
a  periodical  or  publication  is  some- 
what different  from  a  mark,  name  or 
symbol,  by  which  the  products  of  a 
particular  merchant  may  become 
known.  Names,  however,  which  are 
ordinarily  used  to  make  periodicals, 
magazines  and  newspapers  known  to 
the  public,  are  governed  by  the  same 
general  principles  which  apply  to  a 
trade-mark    actually    affixed    to    an 


538    Unfair  Competition  in  Use  of  Literary  Property 

the  use  of  such  names  will  be  forbidden  or  regulated  where  decep- 
tion or  the  likehhood  of  fraud  is  shown.'"'' 

The  same  may  be  said  also  of  publications  other  than  news- 
papers, such  as  magazines,  sheet  music  and  music-books,  series 
of  books,  encyclopedias,  dictionaries,  directories,  and  the  like. 

Newspapers  and  other  periodicals  possess  individuality  and 
have  peculiar  traits  which  are  of  value  to  them  just  as  persons 
have  individuality.  Each  has  a  name  which  may  be  a  fanciful 
one  devised  especially  for  it  or  it  may  be  a  combination  of  common 
words  of  the  language.  In  either  case,  it  is  of  prime  and  essential 
importance  to  the  paper  that  its  identity  be  not  lost,  that  it  be 


article  of  manufacture  and  sale,  and 
adopted  to  denote  origin  and  owner- 
ship. A  court  of  equity  will  inter- 
pose to  protect  such  rights  whenever 
damages  are  caused  by  the  infringe- 
ment. (Citing  cases.)  Such  names 
*  *  *  when  applied  to  newspapers 
and  periodicals  have  been  held  not  to 
be  infringed  because  the  right  to 
the  use  of  the  name  was  invoked 
without  proof  of  deception  or  injury 
to  the  original  user  of  the  name." 

S.  T.  Taylor  Co.  v.  Nasi,  154  N.  Y. 
Supp.  982. 

Motion  for  an  injunction  'pendente 
lite.  Plaintiff  had  long  published  a 
fashion  magazine  under  the  title 
"Bon  Ton"  which  term  acquired  a 
special  and  unusual  meaning  as  re- 
lated to  plaintiff's  magazine  desig- 
nating plaintiff's  periodical.  The  de- 
fendant undertook  to  publish  a  fashion 
magazine,  different  in  size,  form  and 
type  under  the  title  "Gazette  du 
Bon  Ton,"  but  the  words  "Bon  Ton," 
were  used  in  such  a  manner  as  to  fix 
the  identity  of  the  magazine  by  that 
title. 

Philbin,  J.,  said  in  granting  an 
injunction: 

"In  view  of  the  fact  that  the 
physical  characteristics  of  the  two 
publications,  except  in  so  far  as  the 


use  of  the  words  'Bon  Ton'  is  con- 
cerned, are  totally  dissimilar,  it  may 
be  questioned  whether  there  has  been 
sufficient  proof  given  from  which  a 
fraudulent  intent  upon  the  defend- 
ant's part  could  be  inferred.  While 
the  fact  that  the  defendant  is  engaged 
in  the  publishing  business,  occupying 
in  many  respects  a  field  similar  to 
that  occupied  by  the  plaintff,  would 
justify  such  an  inference,  it  is  not 
necessary  to  rest  whatever  right  the 
plaintiff  has  upon  that  theory.  If 
the  plaintiff  has  acquired  the  right  to 
a  trade-mark  in  the  words  'Bon  Ton,' 
as  I  think  has  been  clearly  shown,  it 
is  entitled  to  the  relief  sought.  Gaines 
v.  Leslie,  25  Misc.  Rep.  20;  54  N.  Y. 
Supp.  421.  Under  such  circumstances, 
it  is  not  necessary  to  estabhsh  fraudu- 
lent intent."     (Citing  cases.) 

'-°  Uohertson  v.  Berry  &  Co.,  50  Md. 
591-1878.  A  pubhcation  is  property 
and  there  is  no  reason  why  it  should 
not  be  the  subject  of  the  law's  pro- 
tection. To  put  out  a  colorable  simu- 
lation of  it,  which  may  mislead  the 
public  into  supposing  that  it  is  the 
literary  article  they  had  in  mind  to 
obtain  and  read,  is  an  act  of  de- 
ception which  injures  the  publishers. 
Munro  v.  Tousey,  129  N.  Y.  38- 
1891;  29  N.  E.  9;  14  L.  R.  A.  245. 


Names  of  Newspapers  and  Magazines 


539 


not  confused  with  any  other  paper.  The  ''New  York  Sun" 
strives  for  and  possesses  a  real  individuality.  A  paper  has 
principles,  it  has  a  creed,  it  has  a  history,  a  past  good  or  bad, 
which  it  must  live  up  to  or  live  down.  In  the  one  case  it  is  im- 
portant to  its  owners  that  it  shall  not  lose  its  identity  and  in  the 
other  it  is  of  importance  to  the  community  that  it  be  known  for 
itself  and  be  prevented  from  masking  under  the  name  of  a  more 
respectable  neighbor. ^^ 

Mr.  Browne,  in  his  treatise  upon  Trade-Marks,  sections  415 
to  418,  presents  a  very  interesting  synopsis  of  some  French  cases. 
In  one  of  them,  the  plaintiff's  journal,  the  ''Moniteur  Universel" 
had  become  known  as  the  ''Moniteur."  The  defendant's  paper 
adopted  the  title  ''Moniteur  Officiel"  of  the  French  Empire. 


51  Matsell  V.  Flanagan,  2  Abb.  Pr. 
N.  S.  (N.  Y.)  459-1867  (Com.  PI.). 
Plaintiffs  published  the  "National 
Police  Gazette,"  which  was  commonly 
known  as  the  "PoHce  Gazette."  The 
defendants  published  a  paper  which 
was  an  imitation  of  the  plaintiff's  pa- 
per, with  nearly  the  same  title  and 
device,  called  "The  U.  S.  PoHce 
Gazette."  Held,  that  the  doctrine 
that  trade-marks  shall  not  be  simu^ 
lated  rests  upon  the  broad  principle 
of  protection  of  the  public.  "A  news- 
paper establishment  is  not  excluded 
from  the  advantage  of  these  rules. 
It  is  a  species  of  property,  and  the 
rights  which  appertain  to  it,  so  far 
as  they  are  private  and  exclusive,  are 
entitled  to  the  protection  of  the  laws. 
Snowden  v.  Noah,  1  Hopk.  (N.  Y.)  351- 
1825;  Bell  v.  Locke,  8  Paige  (N.  Y.), 
74-1840.  "The  title  of  a  newspaper 
may  be  a  purely  original  one,  and  the 
proprietor  for  that  reason  entitled  to 
its  exclusive  use.  He  may  create  a 
word,  or  combination  of  words,  for 
the  particular  designation  of  his  pa- 
per, and  in  that  way  acquire  an  ex- 
clusive right  to  the  use  of  the  name 
employed.  He  may  combine,  as  the 
plaintiffs    have,    well-known    English 


words  in  common  use,  to  designate 
his  paper,  and  its  contents  may  in 
many  respects  be  multiplied  by  pub- 
lication in  other  prints,  but  the  pa- 
per will,  nevertheless,  be  original  in 
some,  if  not  in  many,  respects.  The 
individualities  of  editorial  life  are  as 
-rarely  duplicated  as  those  displayed 
in  other  pursuits;  and  the  intellectual 
vigor  distinguishing  the  character 
and  value  of  different  prints,  though 
equal  in  power,  will  be  essentially 
different  in  thought,  —  in  the  prin- 
ciples announced  and  advocated,  and 
in  the  reasoning  by  which  the  same 
theories  are  advanced  and  sought  to 
be  established.  A  newspaper  in  its 
commanding  elements  is  the  result  of 
mental  labor,  and  should  be  pro- 
tected to  the  same  extent,  at  least 
in  the  use  of  symbols,  names,  and 
marks,  as  any  other  property.  It 
may  be  that,  as  it  changes  from  day 
to  day  or  week  to  week,  and  is  more 
or  less  re-created  by  each  publica- 
tion, becoming  as  it  were  the  mirror 
as  well  as  the  chronicler  of  the  times, 
it  is  better  entitled  to  such  protection 
by  reason  of  its  multiplied  original- 
ity." 


540    Unfair  CompetitiOxV  in  Use  of  Literary  Property 

It  was  held,  that  the  title  of  a  journal  is  property,  and  the  use 
of  the  word  Moniteur,  either  singly  or  with  the  qualifications 
"Officiel,"  was  enjoined  for  the  reason  that  it  incontestably  ap- 
peared that  the  ''Moniteur  Universel,"  whether  as  a  daily, 
political,  and  literary  sheet,  or,  as  an  historical  collection,  had 
always  been  known  by  the  simple  title  "Moniteur."  In  another 
case  in  which  the  plaintiff  published  ''La  Presse,"  "La  Presse 
Libre"  was  enjoined,  although  the  papers  belonged  to  differ- 
ent political  parties  and  addressed  themselves  to  different  classes 
of  readers. 

In  another  case,  the  defendants  having  adopted  the  title  "Petit 
Journal,"  which  was  the  title  of  the  paper  published  by  the 
plaintiffs,  added  the  words  "de  la  Somme"  which  were  printed 
in  smaller  characters.  The  judgment  declares  that  the  title  of  a 
journal  is  the  exclusive  property  of  its  founder,  and  to  give  to  a 
new  journal  the  title  already  belonging  to  another  would  be  a 
usurpation  of  property,  and  consequently  an  act  of  an  unlawful 
competition.  An  injunction  was  therefore  granted  forbid- 
ding the  further  use  by  the  defendants  of  the  title  "Petit 
Journal." 

The  locahty  in  which  a  paper  or  magazine  is  circulated  is  an 
important  element  in  determining  the  rights  of  the  parties  to 
the  name  of  it.  Two  papers  may  have  identical  names  and  no 
loss  results,  if  they  do  not  reach  the  same  territory  and  are  not 
read  in  the  same  communities.  In  a  recent  case  of  this  sort,  the 
difference  in  size,  appearance,  price,  lack  of  proven  intent  and 
difference  in  locality  formed  the  basis  for  a  refusal  of  injunction  by 
the  court. ^- 

"  Investor  Publishing  Co.  of  Mass.  that    such    injury    has    actually    oc- 

V.  Dohinson,  82  Fed.  56-1897  (C.  C.  curred. 

S.  D.  Cal.).  A  corporation  is  not  Gannett  v.  Rupert,  127  Fed. 
entitled  to  an  injunction  restraining  962-1904  (C.  C.  A.  2d  Cir.),  re- 
anotlier  corporation  from  publishing  versing  119  Fed.  221.  Complain- 
a  periodical  bearing  a  name  similar  ant,  publishing  a  monthly  family 
to  its  own  pubhcation  where  the  two  magazine  of  wide  circulation  entitled 
periodicals  are  published  in  distant  "Comfort,"  held  entitled  to  an  in- 
states, and  the  names  are  used  with  junction  against  the  publication  of 
distinguishing  characteristics  which  a  monthly  paper  under  the  title  of 
render  injury  to  complainant  im-  "Home  Comfort,"  which  covered  a 
probable,    in    the    absence    of    proof  somewhat  similar  field,  and  circulated, 

in  part  at  least,  in  the  same  territory. 


Comic  Strips 


541 


§  280.  Comic  Strips.  —  The  originator  or  publisher  of  a  series  of 
grotesque  drawings,  commonly  called  ''comic  strips,"  published 
in  newspapers,  which  become  well  known  under  a  certain  title,  is 
protected  under  the  principles  of  unfair  competition  against  in- 
fringement of  his  title. ^^  Protection  may  also  be  accorded  under 
the  law  of  trade-marks. ^'^  But  when  no  copyright  has  been  ob- 
tained and  no  title  is  acquired  in  the  name  under  which  the  draw- 
ings are  published,  the  originator  or  publisher  cannot  prevent 
others  from  representing  the  same  characters  in  different  scenes 
and  incidents. '^^  If  during  the  period  of  publication  the  title  of 
the  drawings  indicates  the  work  of  the  individual  artist  rather 
than  the  supplement  of  the  newspaper  in  which  the  drawings 
have  been  published,  the  artist  may  subsequently  publish  similar 


^^  OutcauU  V.  Lamar,  135  App.  Div. 
110.     Laughlin,  J.,  said: 

"The  theory  of  the  complaint  is 
that  ,  the  cartoonist  invented  this 
title  and  these  names,  and  that  he 
and  his  associates  were  the  first  to 
use  them  in  connection  with  a  public 
play,  and  that  a  court  of  equity 
should  protect  them  in  that  use  upon 
the  principles  upon  which  trade  names 
and  trade-marks  are  protected  by 
the  courts,  notwithstanding  the  fact 
that  they  are  used  in  connection  with 
a  copyright  or  a  patent.     *     *    * 

It  seems  quite  clear,  therefore,  that 
the  complaint  presented  a  case  of 
which  the  courts  of  this  State  have 
jurisdiction  and  over  which  the  Fed- 
eral courts  have  no  jurisdiction,  ex- 
cepting upon  appropriate  allegations 
of  diversity  of  citizenship  which 
would  be  a  ground  for  removing  the 
case  from  the  State  court,  but  not 
for  the  State  court  to  decline  juris- 
diction." 

"  New  York  Herald  Co.  v.  Star  Co., 
146  Fed.  204,  aff'd  146  Fed.  1023. 
Motion  for  a  prehminary  injunction. 
Suit  to  restrain  the  infringement  of  a 
trade-mark. 
^^An  injunction  pendente  lite  was  is- 


sued restraining  the  use  of  the  trade- 
mark "Buster  Brown"  either  in  news- 
paper or  advertising  matter,  so  as  to 
indicate  or  imply  that  the  defendant 
was  about  to  publish  a  "Buster  Brown 
Comic  Section." 

^^  OutcauU  v.  New  York  Herald^ 
146  Fed.  205.  Motion  for  prehminary 
injunction.    Lacombe,  C.  J.,  said: 

"The  contention  of  complainant 
is  that  it  is  unfair  competition  in  trade 
for  any  one  else  to  draw  and  offer  for 
sale  any  other  pictures  in  which,  al- 
though the  scenes  and  incidents  are 
different,  some  of  the  characters  are 
imitations  of  those  which  appeared  in 
the  earlier  pictures  which  complainant 
sold  to  defendant.  In  other  words, 
that  deponent,  although  he  never 
copyrighted  them  and  did  not  ac- 
quire any  right  to  the  title  in  connec- 
tion with  newspaper  publication,  has, 
nevertheless,  some  common-law  title 
to  individual  figures  therein  displayed, 
which  he  can  maintain  to  the  exclu- 
sion of  others,  who  depict  them  in 
other  scenes  and  situations.  It  is 
sufficient  to  say  that  no  authority  is 
cited  supporting  this  proposition, 
which  seems  entirely  novel  and  does 
not  commend  itself  as  sound." 


542    Unfair  Competition  in  Use  of  Literary  Property 


drawings  in  another  newspaper  without  being  guilty  of  unfair 
competition.^^ 


^«  Star  Co.  V.  Wheeler  Syndicate,  Inc., 
91  Misc.  (N.  Y.)  040-1915.  Motion 
to  vacate  a  preliminary  injunction. 
Motion  granted. 

Tlie  plaintiff  sought  an  injunction 
to  restrain  the  defendant  from  using 
the  words  "Mutt  and  Jeff"  in  con- 
nection with  cartoons  designated  as 
"comic  strips,"  which  are  claimed  to 
constitute  comic  sections  of  news- 
papers. 

Fisher,  in  1907,  originated  certain 
comic  drawings  containing  grotesque 
figures  known  as  "Mutt  and  Jeff," 
and  published  the  same  in  newspapers 
in  San  Francisco.  These  drawings 
were  copj^righted  by  Fisher.  In  1910, 
Fisher  entered  into  an  agreement  with 
the  plaintiff  to  devote  his  entire  time 
and  energy  to  the  plaintiff,  and  the 
publications  in  which  William  R. 
Hearst  was  interested.  Subsequently 
in  1910,  Fisher  copyrighted  in  book 
form  some  of  the  cartoons  thereto- 
fore published  under  the  title  "The 
Mutt  and  Jeff  Cartoons,  by  Bud 
Fisher."  A  second  book  was  pub- 
lished under  the  same  name  in  1911. 
These  books  were  also  copyrighted. 
In  1914,  Fisher  applied  for  registra- 
tion of  the  title  "Mutt  and  Jeff"  as 
a  trade-mark  for  a  series  of  cartoons, 
and  registration  was  granted  in 
March,  1915.  Prior  to  December, 
1914,  the  cartoons  were  published 
under  titles  furnished  by  Fisher,  with 
the  words  "By  Bud  Fisher."  The 
words  "Mutt  and  Jeff"  had  never 
been  used  in  the  newspaper  as  a  title. 
Subsequently  the  plaintiff  published 
certain  of  these  drawings  under  the 
name  "  Mutt  and  Jeff."  Weeks,  J., 
said: 

"The  distinctive  title  'Mutt  and 


Jeff'  was  first  applied  to  the  cartoons 
by  the  artist  when  he  copyrighted 
'The  Mutt  and  Jeff  Cartoons,  by 
Bud  Fisher,'  and  the  Star  Company 
never  applied  the  title  to  any  car- 
toons published  and  sold  by  it  until 
December  11,  1914,  and  even  then 
such  title  was  not  used  upon  its 
syndicated  pictures,  and  during  the 
entire  period,  down  to  and  including 
the  publication  of  January  or  Febru- 
ary, 1915,  hereafter  referred  to,  the 
captions  or  titles  of  the  cartoons  were 
invariably  followed  by  the  words  'By 
Bud  Fisher.'     *    *    * 

"It  is  apparent,  therefore,  that  in 
the  present  case  the  question  is  not 
so  much  one  of  trade-mark  infringe- 
ment as  one  of  unfair  competition  and 
the  right  to  acquire  a  trade-mark  in 
a  name  previously  selected  by  an- 
other as  the  title  to  a  copyrighted 
work.     *     *     * 

"In  the  case  at  bar  registration  of 
'Mutt  and  Jeff'  as  a  trade-mark  is 
in  the  name  of  Fisher,  and  the  plain- 
tiff has  not  shown  such  a  clear  right 
in  itself  to  the  trade-mark  as  to  over- 
come this  presumption  of  ownership 
in  Fisher.     *     *     * 

"The  reputation  acquired  for  these 
cartoons  was  not  a  reputation  estab- 
lished in  the  market  for  a  comic  strip 
manufactured  and  produced  by  the 
Star  Company  and  to  which  it  had 
attached  the  mark  or  device  of  '  Mutt 
and  Jeff'  in  order  to  distinguish  it 
from  a  like  class  of  merchandise  pro- 
duced by  others.  It  was  rather  a 
reputation  established  in  the  market 
for  a  comic  strip  containing  the  gro- 
tesque figures  of  'Mutt  and  Jeff,  by 
"Bud"  Fisher.' 

"The    designation    of    authorship 


Use  of  an  Author's  Name 


543 


§  281.  Use  of  an  Author's  Name.  ^  Any  person  may  republish 
an  uncopyrightcd  literary  production  and  use  in  connection  there- 
with the  name  of  the  author.  The  fact  that  the  work  was  first 
published  under  a  pseudonym  does  not  enlarge  the  author's 
rights.  Adoption  of  a  pseudonym  will  not  defeat  the  well-settled 
rules  of  law  that  ''publication  of  a  literary  work  without  copy- 
right is  a  dedication  to  the  public,  after  which  anyone  can  re- 
pubhsh  it."  " 


was  a  part  of  the  trade-mark,  if  trade- 
mark there  was. 

"The  reputation  which  was  estab- 
lished was  a  reputation  which  en- 
titled the  public,  constituting  the 
market,  to  expect  to  receive  and  en- 
joy the  humor  of  the  author  and  the 
skill  of  the  artist  to  which  it  had  be- 
come accustomed. 

"If  there  were  any  doubt  as  to 
the  words  'Mutt  and  Jeff'  being  in- 
separably associated  in  the  public 
mind  with  the  artist  rather  than  with 
the  newspapers  it  is  entirely  dispelled 
by  the  letters  produced  by  the  Star 
Company." 

67  The  'Mark  Twain'  Case.  Clem- 
ens V.  Belford,  Clark  &  Co.,  14  Fed. 
728. 

"This  is  the  first  attempt  which 
has  ever  come  under  my  notice  to 
protect  a  writer's  exclusive  right  to 
literary  property  under  the  law  ap- 
plicable to  trade-marks.  Literary 
property  is  the  right  which  the  author 
or  publisher  of  a  literary  work  has  to 
prevent  its  multiplication  by  copies 
or  duplication,  and  is  from  its  very 
nature  an  incorporeal  right.  William 
Cobbett  could  have  no  greater  right 
to  protect  a  literary  production  which 
he  gave  to  the  world  under  the  fic- 
titious name  of  'Peter  Porcupine' 
than  that  which  was  published  under 
his  own  proper  name.  The  invention 
of  a  nom  de  plume  gives  the  writer  no 
increase  of  right  over  another  who 


uses  his  own  name.  Trade-marks 
are  the  means  by  which  the  manufac- 
turers of  vendible  merchandise  desig- 
nate or  state  to  the  public  the  quality 
of  such  goods,  and  the  fact  that  they 
are  the  manufacturers  of  them;  and 
one  person  may  have  several  trade- 
marks, designating  different  kinds  of 
goods  or  different  qualities  of  the 
same  kind;  but  an  author  cannot,  by 
the  adoption  of  a  nom  de  plume,  be 
allowed  to  defeat  the  well-settled  rules 
of  the  common  law  in  force  in  this 
country,  that  the  'publication  of  a 
literary  work  without  copyright  is  a 
dedication  to  the  public,  after  which 
any  one  may  republish  it.'  No  pseu- 
donym, however  ingenious,  novel, 
or  quaint,  can  give  an  author  any 
more  rights  than  he  would  have  under 
his  own  name.  The  policy  of  the  law 
in  this  country  has  been  settled  too 
long  to  be  now  considered  doubtful, 
that  the  publication  of  literary  matter 
without  protection  by  copyright  has 
dedicated  such  matter  to  the  public, 
and  the  public  are  entitled  to  use  it 
in  such  form  as  they  may  thereafter 
choose,  and  to  quote,  compile,  or 
publish  it  as  the  writing  of  its  author. 
That  is,  any  person  who  chooses  to 
do  so,  can  republish  any  uncopj^- 
righted  literary  production,  and  give 
the  name  of  the  author,  either  upon 
the  title-page,  or  otherwise  as  best 
suits  the  interest  or  taste  of  the  per- 
son so  republishing." 


544    Unfair  Competition  in  Use  of  Literary  Property 


This  principle  of  law  would  also  seem  to  include  the  right  to 
publish  an  uncopyrighted  book  in  the  name  of  its  author,  even 
though  the  previous  publications  were  made  under  a  pseudonym. ^^ 

The  right  to  use  an  author's  name  in  connection  with  his  pub- 
lished works  will  not  justify  a  person  in  using  his  name  when 
the  literary  production  is  inaccurately  set  out.'^^ 


s«  Ellis  V.  Ilurst,  70  Misc.  (N.  Y.) 
122. 

Action  lirought  under  Sections  SC- 
SI of  the  Civil  Rights  Law,  to  enjoin 
publication  and  sale  by  the  defendants 
of  certain  books  with  the  imprint  of 
the  plaintiff's  name  on  the  cover. 
Plaintiff,  an  author  of  standing  and 
reputation,  wrote  certain  juvenile 
stories,  which  he  published  under  an 
assumed  name,  and  which  were  never 
published  by  the  plaintiff,  or  by  his 
authority,  in  connection  with  his  own 
proper  name.  These  publications  were 
not  copyrighted.  The  defendant  pub- 
lished the  books  under  his  nom  de 
plume,  and  also  printed  his  proper 
name  on  the  cover. 

"In  the  case  at  bar  the  defendants 
concededly  had  the  right  to  publish 
the  books  in  the  suit  with  the  nom  de 
plume  of  the  plaintiff,  and  this  right 
carried  with  it  the  right  to  state  the 
true  'name  of  the  author  in  such 
form  in  the  book,  either  upon  the  title 
page  or  otherwise,  as  to  show  who 
was  the  writer  or  author  thereof.' 
The  'Mark  Twain'  case,  1-1  Fed. 
Rep.  728,  730.  The  nom  de  plume 
of  an  author  is  but  the  synonym  of 
his  true  name,  and,  as  was  said  in 
the  'Mark  Twain'  case,  supra,  at 
page  731,  'the  invention  of  a  nom 
de  plume  gives  the  writer  no  increase 
of  right  over  another  who  uses  his 
own  name'  in  the  absence  of  a  copy- 
right. In  publishing  plaintiff's  name 
on  the  volumes  under  consideration 
the  defendants  published  a  truthful 
statement,    directly    connected    with 


the  authorship  of  the  books,  which 
they  had  a  right  to  print." 

s^  Dnmimond  v.  Allcmus,  60  Fed. 
338. 

The  complainant  delivered  a  series 
of  lectures,  and  caused  them  to  be 
reported  in  the  "British  Weekly." 
The  defendant  copied  the  published 
reports  incorrectly,  and  also  added 
matter  to  them,  and  published  the 
same  in  book  form  under  a  title  "The 
Evolution  of  Man;  being  the  Lowell 
Lectures  Delivered  at  Boston,  Mass., 
April,  1893,  by  Professor  Drum- 
mond."  The  court  in  granting  a 
temporar3^  injunction  said: 

"The  defendant's  book  is  founded 
on  the  matter  which  had  appeared  in 
the  British  Weekly,  and,  if  that  mat- 
ter had  been  literally  copied,  and  so 
as  not  to  misrepresent  its  character 
and  extent,  the  plaintiff  would  be 
without  remedy;  but  the  fatal  weak- 
ness in  the  defendant's  position  is 
that,  under  color  of  editing  the  au- 
thor's work,  he  has  represented  a  part 
of  it  as  the  whole,  and  even,  as  to  the 
portion  pubUshed,  has  materially  de- 
parted from  the  reports  which  he 
sets  up  in  justification.  The  title  of 
the  book  is  'The  Evolution  of  Man; 
being  the  Lowell  Lectures  Delivered 
at  Boston,  Mass.,  April,  1893,  by 
Professor  Drummond.'  It  is  true 
that  all  the  reports,  except  one,  in 
the  British  Weekly,  appear  under  the 
heading  in  the  same  words;  but  the 
ordinary  reader  is  not  likely  to  rely 
upon  display  lines  of  a  public  journal 
to  give  a  precise  indication  of   the 


Jurisdiction 


545 


§  282.  Jurisdiction.  —  The  federal  courts  in  the  United  States 
have  exclusive  jurisdiction  of  all  cases  arising  from  the  infringement 
of  copyright.^"  On  the  other  hand,  in  cases  involving  an  infringe- 
ment of  an  author's  rights  in  an  unpublished  literary  production 
the  state  courts  have  exclusive  jurisdiction,  unless  the  federal 
courts  obtain  jurisdiction  by  reason  of  some  extraneous  fact 
such  as  diversity  of  citizenship.^^  The  fact  that  a  copyright  is 
set  up  in  an  answer  will  not  divest  the  state  court  of  jurisdiction. 
Jurisdiction  of  the  state  courts  depends  on  the  allegations  of  the 
complaint.^^ 


contents  of  an  article  to  which  they 
are  prefixed,  whereas  such  a  title  as 
we  have  in  this  instance,  given  to  a 
book  in  permanent  form,  may  rea- 
sonably be,  and  usually  is,  relied  on 
as  truly  stating  the  nature  of  its  con- 
tents. A  most  important  circum- 
stance in  this  cormection  is  that  the 
defendant,  while  precisely  adopting 
his  title  from  the  headhnes  of  the  re- 
ports, has  so  altered  their  text  as  to 
make  it  appear,  contrary  to  the  whole 
tenor  of  the  reports  themselves,  that 
what  his  book  contains  is  the  precise 


language  of  the  author  of  the  lectures, 
although,  as  has  been  said,  it  contains 
only  some  of  the  lectures,  not  all  of 
them,  and  presents  none  of  them 
fully  or  correctly." 

^°  O'Neill  V.  General  Film  Co.,  171 
App.  Div.  854;  OutcauU  v.  Lamar, 
135  App.  Div.  110;  Photo-Drama  Mo- 
tion P.  Co.  V.  Social  Uplift  Film  Corp., 
220  Fed.  448. 

^^  Palmer  v.  DeWitt,  47  N.  Y. 
532. 

^2  OutcauU  V.  Lam,ar,  135  App.  Div. 
110. 


CHAPTER  XIX 

Miscellaneous  Forms  of  Unfair  Competition 

Section  283.  Confusing  uses  of  the  term  "Unfair  Competition"  by  the  courts. 

284.  Acts  contributory  to  unfair  acts. 

285.  Disparagement  of  a  competitor  or  his  goods. 

286.  Disparagement,  not  of  the  goods  of  a  specific  competitor,  but  of 

the  article  sold  by  a  number  of  competitors. 

287.  Obstruction  of  a  competitor's  customers. 

288.  Mis-use  of  term  "Sole  Proprietor." 

289.  Unfair  appropriation  and  use  of  a  competitor's  ideas  and  methods. 

290.  Use  of  false  advertising. 

291.  Advertising,  appropriation  of,  by  a  competitor. 

292.  Solicitation  of  customers. 

293.  Signs:  mis-use  of  those  of  a  competitor. 

294.  Bribery  as  a  means  of  competition. 

295.  Injuring  a  rival  by  pretended  business  competition. 

296.  Passing  off  the  goods  of  a  third  party. 

297.  Sale  of  inferior  goods,  or  seconds,  as  usual  quality. 

298.  Use  of  prices  to  inflict  definite  injury  on  a  competitor. 

299.  The  use  of  prices  for  advertising  purposes  or  as  a  decoy. 

300.  Unfair  use  of  price  as  a  means  of  competition. 

301.  Local  price  cutting. 

302.  Where  the  use  of  cut  prices  accompanies  unfair  or  inaccurate 

description  of  goods. 

303.  Competition  by  unfair  comparison  of  prices. 

304.  Corporate  stock;  acquiring  for  purpose  of  unfair  competition. 

305.  Inducing  breach  of  contract  by  offers  to  save  harmless. 

In  the  present  chapter  an  attempt  has  been  made  to  collect 
some  of  the  cases  in  which  the  fundamental  doctrines  of  equity 
involved  in  all  these  cases  have  been  applied  to  cases  other  than 
those  involving  acts  constituting  passing  off,  as  well  as  cases  of 
passing  off  not  properly  included  in  the  foregoing  chapters. 

No  attempt  will  be  made  to  discuss  the  cases  involving  restraint 
of  trade,  or  cases  concerning  boycotts  or  labor  difficulties,  even 
though  such  acts  were  shown  to  have  been  instigated  by  a  com- 
petitor of  one  of  the  parties  involved  in  the  case;  nor  will  any 
attempt  be  made  to  discuss  the  cases  brought  by  the  Government 
under  the  Sherman  law,  although  these  cases  in  some  instances 
546 


Confusing  Uses  of  Term  ''Unfair  Competition"    547 

involve  questions  relating  to  the  unfairness  of  competitive 
methods. 

§  283.  Confusing  Uses  of  the  Term  "  Unfair  Competition  "  by 
the  Courts. — As  has  been  already  pointed  out,  there  is  considerable 
confusion  as  to  the  exact  meaning  of  the  term  ''Unfair  Compe- 
tition." Not  only  is  there  confusion  as  to  the  definition  of  the 
term  as  used  by  economists  and  publicists,  but  there  is  much  con- 
fusion among  legal  writers  using  the  term  only  in  its  legal  sense. 
For  instance,  the  Sixth  Circuit  Court  of  Appeals,  in  a  per 
curiam  decision,  speaking  of  a  case  involving  a  statement  made 
by  the  defendant,  and  termed  by  the  court  a  "trade  libel,"  said: 

"It  does  not  state  a  case  of  unfair  competition,  because  it  is  not 
averred  that  defendant  has  attempted  to  palm  off  any  other  kind 
of  a  piano  as  that  of  the  complainant."  ^ 

This  imphes  that  this  court  considers  that  nothing  should  be 
termed  unfair  competition  which  does  not  involve  an  act  of  passing 
off. 

In  contrast  to  the  position  of  this  court,  Judge  Pound,  of  New 
York,  in  discussing  the  acts  of  a  person  who  was  formerly  em- 
ployed by  the  plaintiff,  and  who,  after  leaving  the  plaintiff,  solic- 
ited customers  of  the  plaintiff  on  behalf  of  the  defendant,  said  of 
these  acts: 

"This  is  not  a  case  of  malicious  interference  with  contracts 
where  equity  refuses  to  interfere  unless  the  services  are  of  a 
unique  and  special  character,  but  of  unfair  competition."  ^ 

Hough,  J.,  has  said  that  unfair  competition  "consists  of  selling 
goods  by  means  that  shock  judicial  sensibilities."  ^ 

As  used  by  the  Sixth  Circuit  Court  of  Appeals,  the  term  de- 
scribes the  doctrine  of  law  known  as  "passing  off,"  and  nothing 
more.  As  used  by  Judge  Pound,  the  term  not  only  includes  acts 
of  passing  off,  but  many  other  acts  resulting  in  commercial  fraud. 

For  years  past  it  has  been  considered  by  many  authorities  that 
the  jurisdiction  of  the  court  in  enforcing  the  law  of  unfair  com- 
petition was  limited  to  cases  in  which  some  act  of  passing  off  was 
proven.  As  a  matter  of  fact,  however,  the  term  ' '  Unfair  Competi- 
tion" may  be  applied  to  the  legal  rules  regulating  all  acts  done 
in  business  competition  which  are  tainted  with  fraud.    This  was 

1  Everett  Piano  Co.  v.  Maus,  200  etc.,  124  N.  Y.  Supp.  956;  69  Misc. 
Fed.  719.  90. 

2  Witkoj},    etc.,    V.    Great    Atlantic,         » Steiff  v.  Bing,  215  Fed.  204. 


548       Miscellaneous  Forms  of  Unfair  Competition 

pointed  out  some  time  ago  by  the  California  Court,  speaking  of 
the  fundamental  rules  involved  in  these  cases,  thus : 

"The  principles  *  *  *  apply  to  all  cases  where  fraud  is 
practiced  by  one  in  securing  the  trade  of  a  rival  dealer;  and  these 
ways  are  as  many  and  various  as  the  ingenuity  of  the  dishonest 
schemer  can  invent.  *  *  *  The  fact  that  the  question  comes 
to  us  in  an  entirely  new  guise,  and  that  the  schemer  has  con- 
cocted a  kind  of  deception  heretofore  unheard  of  in  legal  juris- 
prudence, is  no  reason  why  equity  is  either  unable  or  unwilling 
to  deal  with  him."  * 

It  would  seem  evident  that  in  the  near  future,  if  there  is  to  be  a 
clear  understanding  on  the  part  of  the  courts  and  the  bar  of  this 
body  of  law,  the  term  ''unfair  competition"  must  be  Umited  to 
acts  constituting  ''passing  off,"  or  the  term  "passing  off"  must 
be  used  generally  to  describe  acts  of  that  character  in  preference 
to  the  term  "unfair  competition,"  leaving  the  term  "unfair  com- 
petition" open  for  use  as  the  name  of  these  rules  which  apply  to 
all  inequitable  acts  done  in  competition,  whether  they  cause 
passing  off  or  other  kinds  of  fraud.  For  a  further  discussion  of 
this  question  see  Chapters  I  and  II. 

There  is  a  tendency  in  newspaper  and  Congressional  discussion 
of  business  conditions  to  fail  to  distinguish  between  unfair  acts 
which  may  be  committed  by  almost  any  trader  and  those  which 
can  be  committed  in  an  effective  way  only  by  powerful  concerns 
possessing  large  resources.  Passing  off  may  be  accomplished  by 
the  mere  affixing  of  a  label  or  the  choice  of  a  name  by  anyone, 
whether  his  resources  be  large  or  small;  but  local  price  cutting, 
the  use  of  bogus  independent  concerns,  "fighting,"  or  "com- 
petitive" brands,  and  like  methods,  are  necessarily  limited  to 
concerns  of  sufficient  size  to  furnish  the  large  capital  essential  to 
the  creation  and  operation  of  these  agencies;  and  acts  of  the  char- 
acter which  necessarily  involve  the  use  of  large  resources  are  gen- 
erally described  as  acts  in  restraint  of  trade,  rather  than  as  acts  of 
unfair  competition. 

§  284.  Acts  Contributory  to  Unfair  Acts.  —  Unfair  acts  are 
often  rendered  possible  only  through  aid  of  third  persons  who 
contribute  to  the  damaging  result.  Printing  or  making  of  labels 
or  other  articles,  with  or  without  knowledge  of  the  use  to  which 

*  Judge  Garroute  in  Wdnstock,  Lvbin  &  Co.  v.  Marks,  109  Cal.  529;  42  Pac. 
142. 


Acts  Contributory  to  Unfair  Acts  549 

they  are  to  be  put  by  him  to  whom  they  are  sold,  may  constitute 
such  contributory  infringement.''' 

The  keeping  for  sale  and  selling  of  labels  made  in  imitation  of 
complainant's,  with  the  intention,  through  their  sale,  of  putting 
into  the  hands  of  dealers  the  means  of  deceiving  ultimate  pur- 
chasers, gives  a  right  of  action. 

An  action  for  unfair  competition  lies  against  one  who  makes 
and  sells  to  others,  who  are  competitors  of  plaintiff,  labels  and 
wrappers  which  closely  resemble  plaintiff's,  which  may  be  used 
by  them  to  mislead  the  public.  It  need  not  be  alleged  that  the 
wrappers  have  been  used  for  the  specific  kind  of  goods  sold  by  the 
plaintiff.  In  Farina  v.  Silverlock,^  the  plaintiff  used  certain  labels 
for  cologne  bottles.  Defendant  printed  copies  of  these,  or  labels 
closely  resembling  them,  and  sold  them  to  persons  who  used  them 
for  goods  not  made  by  plaintiff.  Held,  that  defendant  should  be 
restrained  from  printing  and  selling  any  such  labels,  notwithstand- 
ing the  possibility  that  some  might  be  legitimately  used  to  replace 
labels  that  had  been  lost  from  plaintiff's  product. 

Printers  have  a  right  to  print  and  sell  ''stock  labels"  to  whom- 
ever they  please,  and  cannot  be  enjoined  from  so  doing.  It  can- 
not be  objected,  where  one  claims  an  exclusive  right  to  the  use  of 
a  stock  label  for  a  particular  purpose,  that  to  allow  this  right 
would  amount  to  a  fraud  on  the  printer,  as  curtailing  his  right  to 
sell  to  any  buyer.^ 

This  question  of  acts  contributory  to  unfair  acts  is  further  con- 
sidered in  the  chapter  on  "Defences,"  under  the  heading  ''De- 
ception due,  not  to  defendant's  acts,  but  to  the  acts  of  others." 

In  Sartor  v.  Schaden,^  the  plaintiff  bought  stock  labels  of  a 
printer,  featuring  the  word  "She"  and  applied  them  to  cigars, 
under  which  name  his  product  became  known.  On  appeal  from 
a  decree  enjoining  the  defendant  from  using  the  trade  name  in  the 
same  locality  as  plaintiff,  the  decision  was  affirmed.  Deemer, 
C.  J.,  said: 

"But  it  is  argued  that  the  exclusive  appropriation  of  the  stock 
label  as  a  trade  name  resulted  or  was  likely  to  result  in  a  fraud 
upon  the  printers  thereof .  *  *  *  The  printers  knew  when  they 
sold  their  labels  to  the  plaintiff  that  he  purposed  using  them  as  a 

5  Hennessey  v.  Herrmann,  89  Fed.  '  ^  Hildreth  v.  Sparks  Mfg.  Co.,  99 
669  (1898),  (Cir.  Ct.  N.  D.  Cal.).  Fed.  484-1899. 

8  4  K.  and  J.  650-1858.  » 125  Iowa,  696. 


650      Miscellaneous  Forms  of  Unfair  Competition 

distinctive  brand  for  cigars  made  by  him,  to  be  sold  in  the  locality 
where  he  did  business.  They  knew,  or  should  have  known,  that 
property  rights  might  grow  up  around  the  use  of  this  label,  and 
that  the  demand  for  these  labels  might  in  that  way  be  somewhat 
curtailed.  They  could  easily  have  avoided  this  by  using  some 
distinctive  feature  which  would  indicate  that  the  subsequent  label 
was  not  for  goods  made  by  a  prior  customer  to  whom  they  sold 
the  labels.  If  appellant's  contention  in  this  respect  were  sound, 
it  would  entirely  destroy  the  doctrine  of  trade  names,  in  so  far  as 
they  are  prepared  or  printed  by  others  upon  paper  or  board  to  be 
used  as  cartons,  wrappers  or  labels  for  any  sort  of  manufactured 
goods." 

In  Carson  v.  Ury,^  the  Cigar  Makers  International  Union  of 
America  adopted  a  label  to  be  put  on  boxes  of  cigars  manufactured 
by  its  members.  Plaintiff  was  a  manufacturer  of  cigars  and  a 
member  of  the  union.  His  bill  alleged  that  these  labels  enabled 
him  to  obtain  a  higher  price  for  his  cigars,  and  that  defendant 
should  be  enjoined  from  the  manufacture  and  sale  of  counterfeit 
labels,  as  the  sale  of  them  injured  his  trade.  Held,  that  the  bill 
stated  good  grounds  for  relief  in  equity.  Defendant's  demurrer 
overruled. 

§  285.  Disparagement  of  a  Competitor  or  His  Goods.  —  This 
question  is  fully  discussed  in  the  chapter  on  ''Disparagement  of 
Competitors,"  etc. 

§  286.  Disparagement,  Not  of  the  Goods  of  a  Specific  Com- 
petitor, but  of  the  Article  Sold  by  a  Number  of  Competitors.  — 
This  question  has  recently  been  raised  in  Armstrong  Cork  Co. 
et  al.  V.  Ringwalt,^^  in  which  various  Hnoleum  manufacturers  sued 
a  concern  that  was  applying  the  name  "linoleum"  to  a  substance 
that  was  not  linoleum,  but  a  cheap  substitute  therefor.  The  Cir- 
cuit Court  of  Appeals  overruled  a  demurrer  to  the  complaint  and 
the  case  is  awaiting  trial. 

§  287.  Obstruction  of  a  Competitor's  Customers.  —  In  Gilly 
V.  Hirsch,  the  court  said:  ^^  "So  far  as  we  can  see,  the  point  at 
which  plaintiff's  business,  by  reason  of  the  manner  in  which  it  has 
been  conducted,  has  amounted  to  an  unlawful  interference  with 
that  of  defendant  was  when  plaintiff  or  his  employees  molested 
defendant's  customers,  actual  or  prospective,  whilst  enjoying  the 

9  39  Fed.  777-18S9  (C.  C.  A.).        '^  122  La.  966-972  (1909). 

10  235  Fed.  458. 


Mis-Use  of  Term  "Sole  Proprietor*'  551 

privilege  of  looking  into  his  show  window,  and  undertook  to 
'hustle'  or  coax  them  into  plaintiff's  place,  representing  that  it, 
and  the  show  window,  were  parts  of  the  same  establishment  and 
such  interference  has  been  enjoined."  ^^ 

State  V.  Dalton,^^  is  an  appeal  by  the  state  from  a  judgment 
quashing  a  bill  indicting  the  defendants  for  conspiracy.  In  re- 
versing the  judgment  Clark,  C.  J.,  said:  "In  the  present  case  the 
charge  in  the  bill  is  of  a  conspiracy  whose  object  was  to  break 
up  a  rival  company  and  to  drive  it  from  the  business  field  and 
leave  it  clear  for  the  agents  and  employees  of  the  company  for 
whom  the  defendants  were  working,  and  that  this  conspiracy  was 
to  be  carried  out  by  the  following  means:  To  break  up  the  sales 
made  by  the  agents  of  the  rival  company;  to  abuse  that  company; 
to  vilify  it;  to  follow  up  its  agents  from  town  to  town,  from  road 
to  road,  from  house  to  house,  and  vilify  and  abuse  them;  to  slan- 
der, vilify  and  run  down  that  company;  to  charge  falsely  that 
such  rival  company  was  composed  of  a  set  of  thieves  and  liars; 
and  to  say  falsely  that  the  agents  of  that  company  were  a  set 
of  thieves  and  liars  who  were  trying  to  cheat  and  defraud  the 
people."  *  *  *  The  acts  here  charged  constitute  a  conspiracy 
indictable  at  common  law  and  the  order  quashing  the  bill  was 
improvidently  allowed.  A  combination  to  injure  the  business  of 
another  by  a  resort  to  systematic  falsehood  and  misrepresenta- 
tions, as  here  charged,  has  not  been  made  lawful  by  any  statute 
nor  recognized  as  permissible  by  the  decision  of  any  court." 

In  Standard  Oil  Co.  v.  Doyle,^"^  the  court  said  by  Judge  Nunn: 
"It  was  most  assuredly  unlawful  to  obstruct,  harass,  and  annoy 
appellee's  employees  when  engaged  in  the  discharge  of  their  duties 
in  selling  and  distributing  oils  to  appellee's  customers;  to  threaten 
customers  of  appellee  to  shut  them  up  in  their  business  if  they  con- 
tinued to  deal  in  appellee's  oils;  to  cause  and  procure  false  and 
injurious  reports  concerning  appellee  and  his  business,"  etc. 

§  288.  Mis-Use  of  Term  "  Sole  Proprietor." —  In  McAllister 
V.  Stumpp  &  Walter  Co.,^^  the  plaintiff  and  the  defendant  were 
both  entitled  to  manufacture  certain  proprietary  articles.  The 
defendant  advertised  himself  as  the  "sole  proprietor"  of  this 
article.    Justice  Bischoff  said:  "Defendant's  acts  in  styling  itself 

12  See   also   Evenson   v.   Spaulding,  "118  Ky.  662-671-1904. 

150  Fed.  517.  i*  25  Misc.  (N.  Y.)  438-1898. 

"  83  S.  E.  693-1914. 


552       Miscellaneous  Forms  of  Unfair  Competition 

the  'sole  proprietor'  of  the  articles  would  amount  to  an  unfair 
method  of  trade  competition  as  against  the  plaintiff,  who  is  en- 
titled to  vend  the  goods  under  the  same  general  designations,  and 
the  injunction  is  to  issue  upon  this  ground,  whether  or  not  the 
rights  were  properly  to  be  viewed  as  rights  of  trade-mark,  and 
whether  or  not  the  respective  parties  could  derive  enforcible  rights 
by  their  transfers  from  McAllister.  Both  parties  deal  in  the  prep- 
arations, and  in  any  aspect  neither  has  a  greater  right  than  the 
other.  Hence  the  public  assertion  of  exclusive  control  by  one  is 
an  attempted  usurpation  of  the  rights  of  the  other,  and  clearly  to 
the  latter's  detriment.    Judgment  for  plaintiff  for  injunction." 

§  289.  Unfair  Appropriation  and  Use  of  a  Competitor's  Ideas 
and  Methods.  —  Many  ideas  and  methods  more  or  less  original 
in  character  are  frequently  devised  which  are  not  patentable,  but 
which  have  a  distinct  commercial  value.  Often  much  time  and 
money  are  expended  in  their  development  by  the  originator,  only 
to  find  when  they  are  in  successful  operation  that  a  competitor 
has  appropriated  them  bodily,  and  is  using  them  to  sell  his  own 
goods.  Within  narrow  limits,  acts  of  this  character  have  been 
enjoined  in  recent  years. 

In  Fonotipia,  Limited,  v.  Bradley, ^^  complainant  was  engaged  in 
producing  and  putting  on  the  market  music  records  for  use  upon 
machines  made  after  the  Berliner  patent.  The  defendant  was 
sales  agent  for  the  Continental  Record  Co.,  and  engaged  in  ad- 
vertising and  selling  its  records  under  the  claim  that  they  were 
all  ''duplicates  from  the  original  record  made  by  the  artists." 
As  a  matter  of  fact,  these  records  of  the  defendant  were  made 
from  commercial  records  of  the  complainant,  and,  therefore, 
presumably  and  actually,  were  inferior  to  the  complainant's 
records,  whose  commercial  (copy)  records  approached  the  original 
record  of  the  voice  as  closely  as  was,  for  the  purpose  of  multiform 
reproduction,  mechanically  possible.  The  court  observed  that  it 
had  no  doubt  but  that  property  rights  in  connection  with  material 
things  may  exist,  and  consist  of  incorporeal  rights  to  enjoyment 
of  the  material  object,  and  said,  by  Chatfield,  J.  (page  960) : 
"We  therefore  reach  the  broad  question  of  the  power  of  a  court 
of  equity  to  secure  to  an  individual  by  injunction  the  full  enjoy- 

"  171  Fed.  951-1909.  See  also  Mon-      obtaining  by  fraud  models  for  copy- 
tegut  V.  Hickson,  Inc.,  N.  Y.  Law  J.,      ing  purposes  was  enjoined. 
May  IS,  1917  (N.  Y.  App.  Div.)  where 


Unfair  Appropriation  of  Competitor's  Ideas       553 

ment  of  both  corporeal  and  incorporeal  rights  in  property  created 
by  him  or  at  his  expense  and  capable  of  a  taking  by  another, 
whether  such  taking  either  diminishes  or  destroys  the  enjoyment 
of  these  rights  by  the  owner,  and  diverts  a  part  of  the  enjoyment 
of  profit.  *  *  *  Equity  has  granted  relief  in  certain  typical 
lines  of  cases  where  the  doctrine  of  unfair  competition  seems  to 
have  been  the  guide  to  the  decision,  but  where  the  basis  upon 
which  the  relief  was  granted  was  the  unfair  taking  of  complain- 
ant's property,  rather  than  the  deception  of  the  purchaser." 

The  court  then  cited,  as  illustrating  this  tendency  to  give  relief, 
the  ''ticker,"  ^^  and  the  "scalping"  ^^and  the  " trading  stamp "  ^^ 
cases,  and  said  that  the  effect  of  granting  an  injunction  in  the  pres- 
ent case  might  reach  far  along  the  road  of  preventing  many  things 
winked  at  by  business  practice,  on  the  theory  of  competition :  how 
far,  it  could  not  say.  Relief  by  injunction  was  granted  in  this  case.^" 

The  Prest-0-Lite  cases  fall  under  this  general  head.  In  most 
of  them  there  was,  indeed,  the  element  of  an  attempt  to  pass  off 
goods,  but  the  decisions  did  not  all  turn  on  this  alone.  The  com- 
plainant in  these  cases  made  and  sold  acetylene  gas  for  auto- 
mobiles, in  metal  containers,  which  were  sold  at  $25,  but  ex- 
changeable, when  empty,  for  filled  containers  at  $2.50;  and  at  a 
very  large  expense  a  system  of  exchange  stations  for  this  purpose 
was  established,  so  that  supplies  could  be  had  in  this  way  at  almost 
every  fair-sized  village  in  the  country.  No  competing  dealer  in 
illuminating  gas  could  provide  exchange  facilities  approaching 
those  of  the  complainant.  It  has  accordingly  been  held  in  the 
later  cases  that  competitors  could  re-fill  Prest-0-Lite  containers 
only  on  condition  of  completely  obliterating  the  trade-mark  and 
making  it  reasonably  certain  that  customers  would  know  that 

^''National  Tel.  News  Co.  et  al.  v.  ^^ Sperry  &  Hutchinson  Co.  v.  Me- 

Western  Union  Tel.  Co.,  119  Fed.  294;  chanics  Clothing  Co.,   128  Fed.   800; 

Illinois  Commission  Co.  v.  Cleveland  Sperry    &    Hutchinson   Co.    v.    Louis 

Tel.  Co.,  119  Fed.  301;  Board  of  Trade  Weher  &  Co.,  161  Fed.  219. 

V.  Christie  Grain  &  Stock  Co.,  198  U.  S.  ^o  But   in    White  Studios,   Inc.,   v. 

236.  Dreyfoos,    156   A.   D.    (N.   Y.)    762, 

18  Betterman  v.  Louisville  &  N.  R.  R.  it   was   not   considered   unla^vful,   as 

Co.,  207  U.  S.  205;  Penna.  Co.  v.  Bay,  against  a  photographer,  to  make  and 

150  Fed.  770;  Illinois  Central  R.  R.  Co.  sell  to  the  public  copies  of  his  photo- 

V.  Caffrey,  128  Fed.  770;  Nashville,  C.  graph  (the  consent  of  the  subject  being 

&  St.  L.   Ry.  Co.  V.  McConnell,  82  obtained).    Reversed  by  Court  of  Aj)- 

Fed.  Rep.  65.  peals,  N.  Y.  Law  J.,  June  1,  1917. 


554       Miscellaneous  Forms  of  Unfair  Competition 

they  were  losing  the  privilege  of  re-fiUing  at  Prest-0-Lite  exchange 
stations.  The  most  authoritative  decisions  are:  Prest-0-Lite  Co. 
V.  Davis,  215  Fed.  349  (C.  C.  A.  6th  Cir.),  and  Searchlight  Gas 
Co.  V.  Prest-0-Lite  Co.,  215  Fed.  692  (C.  C.  A.  7th  Cir.).  In  the 
latter  case,  Baker,  C.  J.,  says  (p.  695):  "So  it  is  apparent  that 
something  more  is  involved  here  than  the  question  of  rights 
flowing  from  the  sale  and  purchase  of  original  Prest-0-Lite  gas 
packages.  That  something  more  is  an  incorporeal  right  that  may 
best  be  called  service;  the  right  to  serve  and  be  served  without 
interference  from  outsiders.  Such  a  right,  as  a  species  of  property, 
has  been  recognized  and  upheld."  ^^ 

In  Prest-0-Lite  Co.  v.  Dams,"^^  Hollister,  D.  J.,  said: 
"The  defendants  are  using  the  name  and  reputation  of  com- 
plainant's product  and  complainant's  business  system  to  further 
their  own  competing  goods.  Every  time  they  sell  a  charge  of 
Searchlight  gas  in  a  Prest-0-Lite  tank,  they  either  deceive  the 
user  desiring  Prest-0-Lite  gas  (what  he  had  before)  or  the  pur- 
chaser knowingly  takes  Prest-0-Lite  tanks  charged  with  Search- 
light gas.  In  one  case  they  palm  off  their  own  goods  as  complain- 
ant's and  trade  on  complainant's  good  will;  in  the  other,  they 
sell  their  own  goods  (gas)  only  because  the  purchaser  knows  he 
can,  by  having  a  Prest-0-Lite  tank,  participate  in  the  system  of 
business  established  by  the  complainant.  In  either  case  the  com- 
plainant loses  and  the  defendants  gain  by  defendants'  use  of 
something  which  belongs  to  the  complainant "  (p.  921).  *  *  * 
"The  purchaser  from  the  complainant  gets  more  than  the  tank 
itself.  He  buys  a  right  and  opportunity  to  participate  in  the 
business  system  complainant  has,  at  great  expense,  established 
and  maintained.  The  especial  value  the  tank  has  is  its  exchange- 
ability, when  empty,  for  a  full  tank  essentially  the  same  as  the 
other.  The  popularity  of  Prest-0-Lite  is  without  doubt  due  to  this 
fact.  By  furnishing  dealers  in  all  parts  of  the  country  with  charged 
tanks  for  exchange  for  its  empty  tanks,  and  advertising  in  many 
ways,  an  enormous  demand  has  been  created  by  complainant  for 
its  tanks  and  gas.  This  system  of  exchange  is  necessarily  highly 
profitable  to  the  complainant  and,  in  a  smaller  measure,  to  the 
dealer,  and  performs  a  service  to  the  user  of  the  greatest  impor- 
tance.   This  service  and  the  general  knowledge  that  it  may  be  had 

21  See  list  of  earlier  cases,  215  Fed.          "  209  Fed.  917. 
693-4. 


Unfair  Appropriation  of  Competitor's  Ideas       555 

is  the  very  life  of  complainant's  business.  To  the  tank,  the  title 
of  which  has  passed  from  the  complainant,  is  attached  a  quality  — 
the  quality  of  exchangeability  practically  anywhere  in  the  United 
States.  This  quality  the  complainant  has  created  and  it  belongs 
to  the  complainant  and  is  a  valuable  asset  in  its  business"  (p.  922). 

"And  so  the  defendants,  in  order  to  sell  Searchlight  gas,  the 
profit  of  which  goes  to  them  and  the  Searchlight  Company  which 
charges  defendants'  tanks  with  its  gas,  exchange  with  the  user 
Prest-0-Lite  tanks  charged  with  Searchlight  gas  for  empty  Prest- 
0-Lite  tanks  and  thereby  reap  a  very  considerable  part  of  the 
value  of  the  quality  of  exchangeability  inherent  in  every  tank  the 
complainant  sells.  There  is  surely  something  unfair  in  this,  if 
not  morally  wrong. 

"Fair  competition  between  the  two  systems  is  excellent,  but 
the  acts  complained  of  do  not  involve  competition  between  the 
two  systems.  They  involve  a  use  by  the  defendants  in  the  fur- 
therance of  their  competitive  business,  and  the  appropriation 
of  something  of  value  which  actually  belongs  to  their  competitor. 
Instead  of  using  their  own  system  in  competition  with  complain- 
ant's system,  they  actually  make  complainant's  system  the  very 
medium  through  which  their  gas  was  introduced  to  complainant's 
customers"  (p.  923). 

"The  great  value  of  complainant's  business  lies  in  the  inter- 
changeability  of  its  tanks..  This  quality  the  complainant  has 
created.  It  is  his,  and  no  one  has  the  right  to  appropriate  it  for 
his  own  gain  to  the  detriment  and  even  destruction  of  complain- 
ant's business.  That  quality  is  incorporeal  and  intangible,  but 
is  property  nevertheless.  The  complainant  manifestly  having 
no  adequate  remedy  at  law  is  entitled  to  have  his  property  pro- 
tected by  a  court  of  equity.  This,  of  course,  is  aside  from  any 
question  involved  in  the  ownership  of  a  registered  trade-mark; 
or  any  question  of  deceit.  Defendants'  wrong  does  not  lie  in  the 
mere  use  of  old  Prest-O-Lite  tanks,  but  in  using  them  to  destroy 
the  complainant's  business  system  for  the  purpose  of,  or  with  the 
result  of,  injuring  the  complainant's  business"  (p.  924). 

In  Meccano  v.  Wagner,-^  where  were  elements  of  unfair  com- 
petition (in  the  narrower  sense),  and  of  copyright  infringement, 
but  it  was  also  considered  that  there  was  an  unwarrantable 
appropriation  of  the  methods  and  system  of  complainant,  the 

"234  Fed.  912. 


55G       Miscellaneous  Forms  of  Unfair  Competition 

manufacturer  of  a  mechanical  building  toy;  the  court  saying: 
"Unfair  competition  exists  also  in  that  the  complainant  has  estab- 
lished a  business  system  which  is  peculiarly  its  own.  This  was 
done  at  the  expense  of  time,  thought,  labor,  and  much  money. 
If  it  be  assumed  that  this  court  is  in  error  with  respect  to  the 
finding  of  palming  off  of  defendant's  goods  for  the  complainant's, 
establishing  thereby  unfair  competition,  yet  the  defendants  use 
complainant's  business  and  the  system  it  has  estabhshed.  In 
these  it  has  acquired  a  property  right  of  which  its  competitor 
cannot  deprive  it  by  introducing  his  goods  into,  and  as  a  part  of, 
complainant's  business  and  business  system.  In  this  respect  the 
case  strongly  resembles  Prest-0-Lite  Co.  v.  Davis,  209  Fed.  917, 
affirmed  by  the  Circuit  Court  of  Appeals  of  this  Circuit,  215  Fed. 
349;  131C.  C.  A.  491"  (p.  920). 

§  290.  Use  of  False  Advertising.  —  It  is  unfair  competition  for 
a  competitor  to  make  use  of  advertisements  which  reach  the  com- 
munity served  by  his  competitor,  the  purpose  of  which  advertising 
is  to  drive  a  competitor  out  of  business. 

In  Boggs  v.  Furniture  Co.,^"^  the  plaintiff  was  a  sewing  machine 
agent  and  the  defendant  was  a  retail  merchant  in  the  same  city. 
Both  were  competing  for  the  opportunity  to  sell  White  Sewing 
Machines  in  the  county  in  which  they  lived.  The  Furniture  Co. 
had  been  an  agent  in  the  past,  but  the  plaintiff  had  secured  the 
agency.  The  defendant  thereupon  procured  old  styles  of  White 
machines,  and  whereas  the  plaintiff  advertised  the  new  models 
at  $45  the  defendant  advertised  a  price  of  $24.75,  stating  that 
they  were  "the  latest  patterns,"  etc.,  and  also  advertised  that  the 
machines  had  just  been  received  by  the  defendant,  all  of  which 
facts  it  was  alleged  were  untrue.  Evidence  was  also  produced  of 
threats  on  the  part  of  the  defendant  to  ruin  the  plaintiff  and  run 
him  out  of  business.  The  jury  gave  a  verdict  for  the  plaintiff, 
and  the  Court  on  appeal  held  that  the  acts  of  the  defendant 
created  unlawful  competition.  "The  case  before  us  does  not 
present  a  case  of  lawful  competition,  but  a  case  of  malicious  or 
pretended  competition,  designed  and  carried  out  with  malice 
for  the  purpose  of  injuring  the  plaintiff  in  his  business.  At  least 
the  jury  might  have  so  found  from  the  evidence"  (p.  115). 

§  291.  Advertising,  Appropriation  of,  by  a  Competitor.  —  The 
adoption  and  use  of  a  competitor's  advertising  may  constitute 

=  '  1G3  Iowa,  lOG-1913. 


Advertising,  Appropriation  of,  by  a  Competitor    557 

unfair  competition.  It  has  been  held  unfair  to  use  a  rival's  ad- 
vertising phrases  and  literature  where  such  acts  undermine  the 
plaintiff's  trade.  ^'^ 

One  object  of  advertising  is  to  establish  an  association  in  the 
minds  of  the  buying  public  between  the  advertiser  as  identified  by 
his  name  or  by  his  trade  insignia  and  his  goods.  If  it  be  lawful  for 
a  dealer  to  copy  the  advertising  used  by  his  competitor,  confusion 
on  the  part  of  the  public  is  almost  inevitable,  and  where  such  con- 
fusion exists  the  public  will  mistake  the  goods  of  the  defendant 
for  those  of  the  plaintiff,  especially  if  the  article  involved  be  low 
priced  and  bought  casually  and  without  careful  inspection. 

Most  of  the  cases  in  which  the  imitation  of  advertisements  has 
been  condemned  have  involved  the  usual  elements  of  unfair 
competition;  that  is,  they  involved  a  tendency  to  mislead  pur- 
chasers and  to  pass  off  goods.  But  the  question  has  arisen 
whether,  short  of  this,  might  there  not  be  an  inequitable  appro- 
priation of  the  benefit  of  advertising,  which  would  be  an  unfair 
method  of  competition. 

In  Westminster  Laundry  Co.  v.  Hesse  Envelope  Co.,^^  plaintiff 
ran  for  some  time  a  ''blind"  advertisement  with  the  salient  word 
''Stopurkicken,"  intending,  after  arousing  pubhc  curiosity,  to 
complete  the  advertisement  so  as  to  relate  to  its  laundry  business. 
Before  it  had  been  so  completed,  however,  defendant,  a  manufac- 
turer of  envelopes,  began  advertising  by  means  of  cards,  in  which 
the  word  was  adopted  and  connected  with  defendant's  wares. 
Held,  that  this  was  not  restrainable  as  unfair  competition.  The 
question  was  discussed  as  one  of  trade-mark  or  of  unfair  com- 
petition in  the  narrower  or  technical  sense,  and  not  on  the  broader 
equitable  principles  that  might  have  been  claimed  to  be  applicable, 
such  as  the  unjustified  appropriation  of  value  created  by  plaintiff. 

The  more  conservative  and  the  prevailing  view,  with  regard  to 
advertising,  still  is  that  ''nothing  less  than  conduct  tending  to 
pass  off  one  man's  business  or  merchandise  as  that  of  another  will 
constitute  unfair  competition."  ^^ 

^^  Farmers'  Handy  Wagon  Co.  v.  "The  circulars  sent  defendant's 
Beaver  Silo,  etc.,  Co.,  236  Fed.  731-738  agents  were  apparentlj'  copied,  in 
(1917),  C.  C.  A.  7th  Cir.  substantial  respects,  from  complain- 
ts 174  Mo.  App.  238.  ant's  circulars  to  its  agents.  The 
"  Per  Knappen,  C.  J.,  in  Edward  similarity  is  such  that,  if  intended  or 
Hilker  Mop  Co.  v.  U.  S.  Mop  Co.,  191  hkely  to  be  given  to  the  ultimate  pur- 
Fed,  at  618.  chaser,    we    should    be    disposed    to 


558       Miscellaneous  Forms  of  Unfair  Competition 

A  New  York  case,  decided  at  Special  Term  in  1912,  is  of  interest, 
though  apparently  not  officially  reported.  ^^  A  merchant  was 
enjoined  from  printing  advertisements  on  sheets  resembling  ad- 
vertising pages  of  the  "World,"  and  procuring  news  dealers  to 
fold  them  in  with  copies  of  the  ''World"  and  thus  distribute  them, 
even  though  at  the  top  of  the  inserted  sheet  were  the  words: 
"This  jmblication  is  not  a  part  of  any  newspaper."  Says  Staple- 
ton,  J:  "The  plaintiff  claims  that  the  act  constitutes  an  unlawful 
interference,  to  its  injury  and  damage,  with  its  business  as  the 
publisher  of  a  modern  newspaper,  the  prosperity  of  which  is  so 
largely  dependent  upon  the  advertising  feature  of  the  enterprise." 
Distinguishing  the  sale  of  a  newspaper  from  that  of  ordinary  goods, 
he  says  of  the  newspaper:  "The  sale  is  for  circulation,  and  that 
the  publication  be  distributed  in  form  and  substance  as  issued, 
without  improper  or  unfair  addition,  subtraction  or  defacement, 
is  implied  from  the  circumstances  of  the  transaction.  *  *  * 
The  obvious  purpose  of  the  defendant  was  not  alone  to  secure 
distribution  of  its  advertising  matter,  but  to  tack  such  matter  on 
to  defendant's  publication,  to  impress  some  persons  with  the 
belief  that  it  was  part  of  the  newspaper,  to  trade  on  the  favorable 
reputation  of  the  plaintiff  in  an  unfair  and  fraudulent  manner  by 
the  use  of  an  ingenious  decree  which,  unless  the  design  be  as  sug- 
gested, is  otherwise  purposeless." 

In  this  case  there  was  no  competition  between  the  parties,  but 
the  case  shows  a  recognition  of  the  right  to  conduct  a  business 
unhampered  by  interference  that  injures  the  owner. 

§  292.  Solicitation  of  Customers.  —  As  an  illustration  of  the 
value  placed  upon  good- will  in  England,  and  of  the  sanctity  of 

hold  that  the  ultimate  purchaser  who  ing  points'  identical  in  many  respects 
had  seen  complainant's  circulars  was  with  those  in  complainant's  circulars 
likely  to  be  deceived  by  defendant's  to  its  agents,  the  prospective  purchaser 
circulars  into  purchasing  in  the  belief  may  well  be  deceived  by  the  similarity 
that  the  goods  were  those  of  complain-  of  the  arguments  used  by  agents, 
ant's  manufacture.  But  the  nature  It  seems  to  me  that  this  possibility 
of  the  circulars  issued  by  both  parties  is  rather  remote.  The  rule  is  well 
was  such,  containing  as  they  did  in-  settled  that  nothing  less  than  con- 
structions to  and  a  schedule  of  large  duct  tending  to  pass  off  one  man's 
compensations  paid  agents,  that  it  business  or  merchandise  as  that  of 
seems  quite  unlikely  that  they  would  another  will  constitute  unfair  com- 
naturally  fall  into  the  hands  of  the  petition." 

ultimate  purchaser.    It  is  urged  that,  ^See  Press  Pub.  Co.  v.  Levi  Bros.  & 

a^  defendant's  circulars  furnish  'talk-  Co.,  N.  Y.  Law  Journal,  Dec.  20,  1912. 


Solicitation  of  Customers  559 

court  decrees,  it  is  interesting  to  note  the  action  of  the  Court  of 
Chancery  in  the  case  of  Helmore  v.  Smith.^^  The  father  of  the 
plaintiff,  and  one  Smith,  had  been  engaged  in  the  coal  business  in 
London  prior  to  1886.  A  partnership  accounting  action  was  after- 
wards brought,  and  a  reference  was  ordered.  The  court  or- 
dered that  the  business  be  continued  until  an  appeal  could  be 
heard,  and  appointed  the  defendant  a  receiver.  The  plaintiff  was 
a  clerk  in  the  employ  of  the  firm,  who  had  been  dismissed  by  the 
receiver.  He  then  set  up  in  business  as  a  coal  merchant  on  his 
own  account,  and  at  once  sent  out  circulars  to  the  customers  of  the 
firm,  stating  that  in  consequence  of  his  dismissal  he  had  started 
business  on  his  own  account  and  was  soliciting  their  trade.  Later 
he  sent  out  another  circular,  which  read  as  follows  — 

' '  Sir,  —  I  beg  to  enclose  you  report  of  the  above  case  from  the 
Times  of  Nov.  9,  1886.  The  Defendant,  Charles  Smith,  is  appeal-* 
ing  from  such  judgment,  and  pending  the  hearing  of  such  appeal 
has  been  appointed  receiver  on  giving  adequate  security. 

''As  your  esteemed  orders  have  for  the  most  part  come  under 
my  personal  supervision  while  manager  to  the  firms  of  Helmore 
&  Smith  and  Charles  Smith  &  Co.,  I  beg  to  submit  to  your  notice 
my  present  prices,  and  to  inform  you  that  should  you  favour  me 
with  any  orders  they  will  receive  the  same  attention  and  care  as 
formerly. 

''Thanking  you  in  anticipation,  I  am  yours  obediently, 

"Henry  W.  Helmore" 
The  report  to  which  he  refers  was  a  report  of  a  hearing  of  a  case 
before  the  Vice-Chancellor  in  Chancery.  He  was  asked  by  the 
Justice  in  Chancery  hearing  the  case,  to  give  an  undertaking  to 
desist  from  issuing  circulars  calculating  to  draw  the  trade  of  the 
firm.  He  refused.  The  court  then  ordered  him  "  to  be  committed 
to  prison,  but  give  him  three  days  before  the  order  is  enforced, 
to  see  whether  he  will  give  an  undertaking  in  the  terms  of  the 
notice  of  motion."  An  appeal  was  taken  to  the  Court  of  Appeals, 
where  this  order  was  sustained.  Lord  Cotton,  L.  J.,  saying  — 
"My  decision  does  not  turn  on  this  fact,  but  it  must  not  be  sup- 
posed that  I  do  not  strongly  disapprove  of  such  conduct.  It  was 
said  that  there  was  a  general  custom  among  persons  engaged  in  the 
coal  trade  to  act  in  this  manner.  If  that  be  so,  all  I  can  say  is 
that  the  sooner  they  act  as  honourable  men  the  better."  *  *  * 
29  C.  A.  1886,  35  Ch.  Div.  449. 


5()()       Miscellaneous  Forms  of  Unfair  Competition 

"No  fair  competition  would  justify  the  act  of  the  appellant  in 
sending  round  a  copy  of  the  report  in  the  Times,  which,  if  taken 
alone,  would  lead  the  customers  to  think  that  the  business  was 
in  a  failing  state  or  would  shortly  fail,"  ib.  See  index  under  title 
"  Customers." 

§  293.  Signs;  Misuse  of  those  of  a  Competitor.  —  It  is  unfair 
competition  for  a  defendant's  servants  to  destroy  or  carry  away 
cards  which  plaintiffs'  customers  displayed  in  their  windows  when 
they  desired  plaintiff's  oil  to  be  delivered  to  them.^° 

§  294.  Bribery  as  a  Means  of  Competition.  —  It  is  unfair  and 
illegal  to  use  bribery  or  graft  to  influence  trade  or  contract  to  the 
benefit  of  the  person  offering  the  bribe  or  gratuity.  There  is  a 
distinction  to  be  drawn  between  merely  selling  goods  on  merit 
and  price  alone  and  selling  goods  by  buying  the  disloyalty  of  a 
competitor's  agents  or  representatives  in  order  to  make  the  sale. 
This  first  method  is  fair,  the  second  is  illegal  and  a  wrong  to  com- 
petitors and  at  the  suit  of  a  competitor  may  be  enjoined.  It  is 
unfair  competition.^^ 

§  295.  Injuring  a  Rival  by  Pretended  Business  Competition.  — 
Injuring  the  good- will  of  a  person  in  business  by  means  of  com- 
petition when  the  sole  object  of  the  competition  arises  because  of 
ill  will  to  the  person  occupying  the  business  field  and  not  because 
the  competitor  seeks  financial  gain,  is  an  actionable  wrong.  Such 
competition  is  not  considered  legitimate  for  the  reason  that  it  is 
not  carried  on  for  the  purpose  of  estabHshing  a  rival  business  but 
simply  for  the  purpose  of  destroying  an  existing  good-will,  and 
when  that  purpose  has  been  accomplished  the  business  of  the 
competitor  will  cease.  It  is  a  pretended  business  competition  and 
nothing  more.  The  motive  is  coupled  with  the  deed  and  the  re- 
sult taken  to  be  against  public  poHcy.  In  other  words,  the  law 
will  distinguish  between  creative  and  purely  destructive  com- 
petition.   In   the   case  of   Tuttle  v.   Buck,^"^   the   business  was 

30  Dunshee  v.  Standard  Oil  Co.,  152  enter  into  a  contract  for  his  principal 

Iowa,  618-1911;  165  Iowa,  625-1914.  is  pernicious  and  corrupt,  and  cannot 

"  City  of  Findlay  v.  Pertz,  66  Fed.  be  enforced  at  law.     This  principle  is 

427-434.    "Any  agreement  or  under-  founded  upon  the  plainest  principles 

standing  between  one  principal  and  of  reason  and  morality,  and  has  been 

the  agent  of  another,  by  wliich  such  sanctioned  by  the  courts  in  innumer- 

agent  is  to  receive  a  commission  or  able  cases." 

reward  if  he  will  use  his  influence  with  ^-  107  Minn.  145;  Boggs  v.  Duncan- 

his  principal  to  induce  a  contract  or  Schell  Furniture  Co.,  163  Iowa,  106. 


Passing  Off  the  Goods  of  a  Third  Party 


561 


started  by  the  defendant  not  for  profit,  but  regardless  of  profit, 
for  the  sole  purpose  of  driving  a  competitor  out  of  business. 
The  Minnesota  Court  thus  characterized  this  defendant's  acts: 

"To  call  such  conduct  competition  is  a  perversion  of  terms. 
It  is  simply  the  application  of  force  withou?t  legal  justification, 
which  in  its  moral  quality  may  be  no  better  than  highway  rob- 
bery." 

§  296.  Passing  Off  the  Goods  of  a  Third  Party.  —  Passing  off 
the  goods  of  a  third  party  as  those  of  some  other  person  known 
to  the  public  may  be  accomplished  in  various  ways,  such  as  giving 
the  goods  of  A  to  a  customer  who  asks  for  the  goods  of  B,^^  or  by 

In  Evenson  v.  Syavlding,  150  Fed.      size  of  a  cake  of  "Sapolio."    In  grant- 


517,  522,  Gilbert,  C.  J.,  said:  "Their 
sole  purpose  appears  to  have  been 
to  interfere  with  and  prevent  sales  by 
the  appellees.  This  they  accomplished 
by  breaking  in  upon  conversations, 
interrupting  sales,  and  making  false 
representations  as  to  the  nature  of  the 
appellee's  goods,  and  the  manner  in 
which  they  treated  the  purchasers 
thereof  and  other  offensive  acts.  Their 
purpose  was  not  to  sell  goods  of  their 
own,  and  thereby  interfere  with  sales 
by  the  appellees,  but  it  was,  by  pur- 
suing a  policy  of  molestation,  to  drive 
the  appellees  out  of  business  and  out 
of  the  country.  The  right  of  compe- 
tition furnishes  no  justification  for 
such  acts.  This  is  in  accordance, 
with  the  decided  weight  of  authority." 
33  Enoch  Morgan  Sons  Co.y.  Wend- 
over,  43  Fed.  420,  was  a  suit  in  equity 
to  restrain  the  unlawful  use  of  the 
trade-mark  "Sapolio."  The  plaintiff 
proved  that  the  defendant  delivered 
to  purchasers  requesting  "Sapolio"  a 
cake  of  soap  called  "Pride  of  the 
Kitchen,"  without  explanation.  It 
was  admitted  that  the  soap  desig- 
nated as  "Pride  of  the  Kitchen  "  was 
enveloped  in  a  wrapper  wholly  differ- 
ent from  that  used  to  envelop  "Sa- 
polio," and  that  the  shape  and  size  of 
the  cake  also  differed  from  the  usual 


ing  an  injunction,  Green,  J.,  said: 
"That  the  act  of  the  salesman  in  offer- 
ing 'Pride  of  the  Kitchen'  in  response 
to  a  demand  for  'Sapolio'  is,  though 
done  silently,  a  positively  unlawful 
act,  is  clear.  Its  unlaNvfulness  con- 
sists in  an  attempt  to  steal  away  the 
business  of  the  complainant  for  the 
benefit  of  the  manufacturers  of  '  Pride 
of  the  Kitchen.'" 

Fairbank  Co.  v.  Dunn,  126  Fed. 
227,  On  motion  for  a  preliminary  in- 
junction, Ray,  D.  J.,  said:  "The  de- 
fendant, John  F.  Dunn,  is  conducting 
and  transacting  the  business  of  a 
grocer  at  Little  Falls,  Rome,  and 
Utica,  in  the  state  of  New  York.  In 
his  said  business  he  has  advertised 
Gold  Dust,  and  has  advertised  to  sell 
the  same  at  a  less  price  than  the  same 
can  be  obtained  and  sold  for  at  a  profit 
in  the  market.  Having  so  advertised 
Gold  Dust,  the  defendant  has  on  sev- 
eral occasions  knowingly  and  wilfully 
and  fraudulently  handed  out  and  de- 
livered to  his  customers  who  called 
for  Gold  Dust,  and  who  desired  to 
purchase  Gold  Dust,  and  who  ex- 
pected they  were  purchasing  and  ob- 
taining Gold  Dust,  another  and  in- 
ferior article  known  as  Buffalo,  and  in 
so  doing  has  not  only  imposed  upon 
and    defrauded    purchasers    to    their 


562       Miscellaneous  Forms  of  Unfair  Competition 


use  of  a  show  card  of  B  displayed  with  the  goods  of  A.  It  has 
been  held,  in  this  connection,  that  where  two  products  have  be- 
come well  known  under  the  same  family  name  but  are  placed  on 
the  market  in  distinctive  wrappers  that  it  is  not  incumbent  on 
a  dealer  in  both  these  articles  to  inform  a  prospective  purchaser 
inquiring  for  the  product  merely  under  the  family  name  that  there 
are  two  such  products  and  to  ask  the  purchaser  which  he  desires.-"^* 


damage  and  injury,  but  has  injured 
the  complainant. 

"The  dcfen(huit  claims  that  he  was 
ignorant  of  this  act,  but  the  court  can- 
not so  find.  The  defendant  claims  that 
he  has  had  no  purpose  to  deliver  to  cus- 
tomers the  soap  powder  Buffalo  when 
Gold  Dust  has  been  called  for.  The 
court  is  not  satisfied  that  suchis  the  fact. 

"The  acts  complained  of  are  un- 
lawful. The  defendant  has  no  right 
to  deliver  Buffalo  when  the  customer 
calls  for  Gold  Dust.  The  customer  has 
the  right  to  receive  Gold  Dust  when 
he  calls  for  it  and  the  seller  purports 
to  fill  his  order,  without  taking  pains 
to  examine  the  package  delivered, 
and  he  is  defrauded  if  an  inferior  ar 
tide  is  substituted,  even  if  the  pack- 
age bears  a  label  showing  it  to  be 
Buffalo  and  not  Gold  Dust. 

"The  customer  at  a  grocery  is  not 
compelled  to  inspect  every  package 
called  for  to  see  that  he  gets  what 
he  orders.  He  has  the  right  to  assume 
that  he  gets  what  he  orders.  The 
merchant,  by  assuming  to  fill  the  order, 
represents  that  the  goods  put  up  and 
delivered  are  those  ordered.  The  law 
is  too  well  settled  on  this  subject  to 
require  extended  quotation.  The  man- 
ufacturer of  an  article  placed  upon  the 
market  for  sale  has  the  right  to  demand 
of  the  dealer  who  purports  and  adver- 
tises to  sell  it  that  he  deliver  his  prod- 
uct when  called  for  by  the  customer. 

"The  injunction  pendente  lite  is 
granted,  and  will  issue." 


3^  Walter  Baker  &  Co.,  Ltd.,  v.  Gray 
et  al.,  192  Fed.  921.  Appeal  from  an 
order  dismissing  a  bill  to  restrain  un- 
fair competition. 

The  plaintiffs,  manufacturers  of 
chocolate,  based  their  claim  on  the 
fact  that  defendants  who  kept  the 
product  of  both  plaintiffs  and  another 
manufacturer  of  chocolate  named 
Baker  for  sale  in  their  grocery  have 
not,  on  an  inquiry  by  customers  for 
"Baker's  Chocolate"  without  more, 
handed  out  at  once  plaintiffs'  pack- 
ages, or  have  not  affirmatively  called 
attention  to  the  fact  that  there  were 
two  kinds  of  Baker's  Chocolate,  and 
asked  the  inquirers  which  they  desired. 

In  aflSrming  the  decision  of  the  court 
below  Adams,  C.  J.,  said: 

"In  view  of  the  uncontradicted 
testimony  that  the  prominent  yellow 
label,  the  striking  effigy  of  the  choco- 
late girl,  and  the  display  of  the  name 
of  'Walter  Baker  &  Co.,  Limited,' 
so  distinguished  and  characterized 
complainant's  packages  that  all  per- 
sons knew  them  by  those  tokens  or 
some  of  them,  it  seems  perfectly  ob- 
vious that  an  inquirer  for  its  chocolate 
would,  at  once,  on  being  offered 
a  package  of  the  'Justice  Brand' 
manufactured  by  William  H.  Baker 
with  its  label  so  strikingly  different 
from  those  characterizing  the  Walter 
Baker  product,  refuse  to  accept  or 
keep  it,  unless  they  were  wiUing  to 
take  it  on  its  own  merits.  The  de- 
livery of  a  package  of  the  'Justice 


Sale  of  Inferior  Goods  or  Seconds  563 

This  decision  has  been  approved  but  a  very  few  times  and  does 
not  state  what  would  seem  to  be  the  sound  rule.  The  proposition 
is  now  established  that  the  purchasing  public,  when  asking  for  a 
specific  article,  are  entitled  to  receive  what  they  ask  for,  and  not 
to  be  made  victims  of  a  play  on  names,  or  a  possible  indefiniteness 
in  the  order  given,  when  the  shopkeeper  knows  perfectly  well 
what  brand  they  are  seeking  or  a  fortiori,  if  he  be  in  doubt. 

§  297.  Sale  of  Inferior  Goods,  or  Seconds,  as  Usual  Quality.  — 
In  a  recent  Enghsh  case  the  sale  of  "second  class  goods,"  as  the 
court  phrased  it,  was  held  a  form  of  ''passing  off,"  which  is  ''a 
more  subtle  and  possibly  a  more  injurious  passing  off"  than  the 
usual  sort.^^" 

In  A.  G.  Spalding  &  Bros.  v.  A.  W.  Gamage,  Ltd.,  ^^  the 
plaintiff  placed  upon  the  market  a  football  which  was  called 
''Orb "  and  which  achieved  a  good  reputation.  In  1911  the  plaintiff 
put  out  a  new  type  of  football  under  the  name  "Improved  Orb," 
the  footballs  previously  sold  having  proved  unrehable.  It  ceased 
to  sell  the  old  footballs  under  the  name  "Orb"  and  sold  its  entire 
stock  of  them  to  a  waste  rubber  dealer.  The  defendant  purchased 
these  footballs  from  the  dealer  and  advertised  the  same  for  sale 
and  sold  them  at  cut  prices  under  the  name  "Improved  Orb." 
Thereafter  the  defendant  changed  its  advertisements,  simply 
stating  that  the  footballs  were  "Orb"  balls.  On  trial  an  injunc- 
tion and  accounting  was  granted  but  the  Court  of  Appeals  re- 
versed the  same  holding  that  plaintiff  failed  to  state  a  cause  of 
action.  The  decision  of  the  trial  court  was  restored  on  appeal  to 
the  House  of  Lords.    Lord  Parker  of  Waddington  wrote: 

"It  appears  to  me  to  be  quite  certain  that  anyone  comparing 
any  of  these  advertisements  with  the  catalogue,  or  anyone  with  a 
knowledge  of  the  catalogue  and  seeing  the  advertisements,  would 
be  led  to  conclude  that  the  defendants  were  offering  for  sale  at 

Brand'   on  a  call  for  complainant's  fail  of  its  purpose.     A  purchaser  of 

chocolate  would  be  in  effect  a  proposi-  ordinary  prudence  or  even  the  most 

tion  to  the  purchaser  to  accept  that  in  unwary    could   not    be   deceived    by 

Ueu  of  what  he  asked  for.    In  reaUty,  it." 

therefore,  we  fail  to  see  how  the  tender  '*"  Spaulding  v.  Gamage,  110  L.  T. 

of  a  WiUiara  H.  Baker  package  on  a  530-1914;  Jameson  v.  Clarke,  19  R. 

call  for  complainant's  chocolate  could  P.  C.  22o;Leacher  v.  Levy,  23  R.  P.  C. 

deceive    any    purchaser.      Certainly  117;  Hunt  v.  Ehrmann,  27  R.  P.  C. 

an  attempt  to  deceive  in  that  way  512. 

would  be  so  palpable  as  to  signally  ^^  32  R.  P.  C.  237. 


564       Miscellaneous  Forms  of  Unfair  Competition 

4s.  9d.  the  identical  ball  catalogued  by  the  plaintiffs  in  their  1912 
catalogue  at  lOs.  6d.  Indeed,  I  find  it  difficult  to  imagine  that 
the  advertisements  were  not  deliberately  framed  so  as  to  convey 
this  impression.     *    *    * 

"Some  discussion  took  place  before  your  Lordships  as  to  the 
subsequent  advertisements  issued  by  the  defendants,  it  being 
admitted  that  these  advertisements  were  not  such  that,  taken 
alone,  they  would  have  given  rise  to  a  right  of  action  on  the  part 
of  the  plaintiffs.  This  may  well  be  so,  but,  taken  in  connection 
with  the  previous  advertisements,  I  cannot  help  thinking  that 
Mr.  Justice  Sargant  was  right  in  his  conclusion  that  they  were 
hardly  consistent  with  fair  or  honest  trade.  The  effect  of  a  mis- 
leading advertisement  is  a  continuing  effect,  and  it  might  reason- 
ably be  expected  that  a  fair  and  honest  trader,  having  his  atten- 
tion called  to  the  fact  that  his  advertisements  were  misleading, 
would  do  all  in  his  power  to  counteract  their  effect.  There  is 
nothing  in  the  subsequent  advertisements  pointing  to  a  desire  on 
the  part  of  the  defendants  to  undo  the  harm  they  had  done  by 
their  first  advertisements.  Indeed,  I  am  not  sure  that  the  sub- 
sequent advertisements  were  not  so  framed  as  to  strengthen  a 
belief  induced  by  the  first  that  the  defendants  were  selling  for 
4s.  9d.,  or  some  less  price,  the  same  ball  as  the  plaintiffs  had  cat- 
alogued at  10s.  6d. ;  whereas,  under  the  circumstances,  they  ought 
in  common  fairness  to  have  been  so  framed  as  to  counteract  such 
belief. 

"My  conclusion,  therefore,  is  that  the  appeal  ought  to  be 
allowed  and  Mr.  Justice  Sargant's  judgment  restored." 

§  298.  Use  of  Prices  to  Inflict  Definite  Injury  on  a  Competitor. 
—  The  price  at  which  merchandise  is  offered  for  sale  may  be 
illegally  used  to  inflict  definite  and  specific  injury  upon  a  rival. 
This  is  illustrated  in  the  case  of  Boggs  v.  Duncan-Schell  Furniture 
Co.^^  In  this  case  both  parties  were  seeking  to  obtain  the  agency 
to  the  White  Sewing  Machine.  The  plaintiff  finally  obtained  it, 
and  advertised  the  machine  at  $45.  The  defendant  for  the  pur- 
pose of  destroying  the  plaintiff's  business,  and  injuring  him, 
advertised  the  same  machine  at  $24.75.  As  a  matter  of  fact,  how- 
ever, the  defendant  did  not  have  the  same  machine  as  the  plain- 
tiff, but  an  older  and  less  improved  type.  The  defendant  also 
stated  in  his  advertisements  that  the  machines  had  just  been  re- 

38 163  Iowa,  106. 


Use  of  Prices  for  Advertising  Purposes  565 

ceived  by  him,  which  was  not  the  fact.  The  action  was  brought 
at  law,  and  the  jury  gave  a  verdict  for  the  plaintiff,  with  damages. 
This  act  was  held  to  be  unfair  competition.    The  Court  said  — 

''While  a  person  has  the  right  to  pursue  his  avocations  and  his 
business  for  his  own  pleasure  and  profit,  he  has  no  right,  directly 
or  indirectly,  to  willfully  and  maliciously  injure  another  in  his 
lawful  business  or  occupation.  Men  have  the  right  to  engage  in 
lawful  competition,  and,  though  the  competition  may  have  the 
effect  of  driving  another  out  of  business,  if  the  competition  is 
lawful,  no  action  arises,  though  injury  resulted  from  the  competi- 
tion. Where  there  is  lawful  competition  for  gain,  for  supremacy 
in  business,  for  the  legitimate  control  of  business,  even  though 
the  purpose  and  effect  of  the  competition  is  to  drive  from  business 
competitors,  yet,  if  the  competition  is  lawful  and  carried  on  in  a 
lawful  way,  no  action  will  lie.  There  is  a  difference  between  law- 
ful competition  and  simulated  competition  carried  on  with  the 
sole  purpose  and  intent,  not  of  profit  and  gain,  but  of  maliciously 
injuring  others  engaged  in  that  particular  business. 

"The  case  before  us  does  not  present  a  case  of  lawful  competition, 
but  a  case  of  simulated  or  pretended  competition,  designated  and 
carried  out  with  malice  for  the  purpose  of  injury  to  the  plaintiff 
in  his  business.  At  least  the  jury  might  have  so  found  from  the 
evidence." 

In  this  case  the  cut  price  was  but  one  of  several  unfair  acts 
committed  by  the  defendant.  The  question  as  to  whether  the 
cutting  of  price  alone  for  a  similar  unfair  purpose  would  be  unfair 
competition  has  not  been  yet  decided  in  the  affirmative  in  this 
country,  although  it  would  seem  as  if  there  might  easily  be  in- 
stances where  such  an  act  would  be  unfair. 

§  299.  The  Use  of  Prices  for  Advertising  Purposes  or  as  a 
Decoy.  —  The  commonest  form  of  price  cutting  is  that  which 
involves  the  use  of  a  price  which  is  low  enough  to  attract  public 
attention  when  compared  with  the  ordinary  prices  at  which  the 
goods  advertised  are  normally  sold.  Usually  the  person  adver- 
tising the  low  price  names  a  reason  therefor,  as  for  instance,  a 
liquidation,  a  season  sale,  a  stock  taking,  or  a  closing  out  sale. 
Few,  if  any  cases,  exist  in  this  country  which  have  definitely  de- 
cided the  legal  character  of  acts  of  this  sort.  In  Europe  sales  of 
this  character  and  advertisement  of  the  prices  under  these  con- 
ditions is  most  carefully  regulated  either  by  statute  as  in  Germany, 


56G       Miscellaneous  Forms  of  Unfair  Competition 

or  by  court  decisions  as  in  France.  In  the  latter  country  it  is 
considered  to  be  unfair  competition  to  advertise  a  low  price,  and 
give  as  a  reason  therefor  the  desire  of  a  merchant  to  close  out  his 
remaining  stock,  and  then  to  proceed  to  buy  in  new  stock  to  sell 
at  the  low  price  named  in  the  advertisement.  In  this  country, 
on  the  contrary,  such  methods  are  practiced  by  concerns  claiming 
the  highest  ethical  standards.  The  right  of  a  merchant  to  sell  his 
goods  at  any  price  he  wishes,  should  be  no  greater  than  the  right 
of  his  competitor  to  insist  that  the  prices  used  in  the  competition 
between  them  should  not  be  used  to  beguile  the  public  into  buying 
goods  under  a  misapprehension  or  misunderstanding  of  the  reasons 
for  the  sale.  The  foreign  view  of  business  methods  of  this  kind 
is  clearly  set  forth  in  the  following  statement  from  one  of  the 
French  text  writers  — 

Joret-Desclosieres,^^  states:  "Doubtless  the  merchant,  having 
become  the  owner  of  an  article  of  commerce,  can  sell  the  article 
under  conditions  that  seem  best  to  him.  He  can  even,  according 
to  present  necessities,  sell  at  a  loss,  reserving  the  responsibility 
which  he  incurs  in  case  of  failure.  But  these  operations,  of 
which  he  is  the  sole  judge,  are  only  possible  under  this  condi- 
tion, that  they  will  not  be  able  (likely)  to  injure  another,  accord- 
ing to  the  general  principles  of  justice. 

"Now,  if  the  merchant  plays  a  double  game,  selHng  under  the 
price  of  the  manufacturer,  and  making  use  of,  at  the  same  time, 
his  name  and  his  mark,  to  allure  the  public  by  the  bait  of  an  im- 
portant reduction  in  price  which  he  would  not  obtain  even  in 
manufacture,  it  is  evident  that  the  retailer  depreciates  the  mer- 
chandise, that  he  debases  the  current  price,  and  that  he  causes, 
consequently,  damage  to  the  manufacturer,  which  ought  to  be 
made  good." 

This  passage  is  quoted  with  approval  by  Pouillet  in  his  standard 
work  on  Concurrence  deloyale  (Unfair  Competition),  1906. 
Pouillet  says:  ^^" 

"No  doubt  that  on  principle,  and  in  the  absence  of  an  agree- 
ment to  the  contrary,  a  retailer  has  a  right  to  sell  at  a  price  that 
suits  him,  even  at  a  loss,  articles  which  he  buys  for  his  trade. 
That  is  one  of  the  evident  consequences  of  the  principle  of  free- 
dom of  trade.    Nevertheless,  the  rule  is  far  from  being  without 

"  See  article  in  the  Mont.  Trib.  ""  Trait^  des  Marques  de  Fabrique, 
64,  3477.  F.  Pouillet,  §  1221. 


Unfair  Use  of  Price  as  Means  of  Competition    567 

exceptions.  Sale  at  a  cut  price  can  take  place  under  such  con- 
ditions with  so  evident  an  intention  to  depreciate  the  merchan- 
dise, that  it  becomes  an  act  of  unfair  competition." 

§  300.  Unfair  Use  of  Price  as  a  Means  of  Competition.  — 
There  is  much  discussion  at  the  present  time  as  to  legal  character 
of  the  act  of  cutting  prices.  This  term  ''price  cutting"  has  no 
exact  legal  definition,  due  largely  to  the  fact  that  there  exists  no 
standard  or  rule  by  which  it  can  be  determined  whether  or  not 
the  price  in  question  is  a  price  lower  than  it  is  lawful,  under  all 
the  circumstances  for  the  seller  to  place  upon  his  goods. 

There  exists  little,  if  any,  authority  holding  that  it  is  illegal 
merely  to  offer  or  to  sell  merchandise  at  any  particular  price  or 
at  any  particular  scale  of  prices,  no  matter  how  low  or  high.  The 
naming  of  prices  is  held  to  become  unfair  or  fraudulent  only  in 
connection  with  other  acts  on  the  part  of  the  seller  naming  the 
price,  or  conditions  prevailing  at  the  time  of  the  sale.  There  is 
little  doubt,  however,  that  price  may  be  used  as  an  instrument  of 
fraud,  now  that  advertising  plays  so  important  a  part  in  mer- 
chandising. 

§  301.  Local  Price  Cutting.  —  It  is  generally  recognized  in  this 
country  to-day,  that  it  is  illegal  to  vary  the  price  in  one  locality 
from  the  price  named  in  another  locality,  for  the  purpose  of 
driving  a  competitor  out  of  business.  Of  course  in  deciding 
whether  the  price  is  unfair,  in  cases  of  this  character,  regard  must 
be  had  to  differentials  of  transportation  and  other  expenses.  This 
principle  has  been  recognized  in  the  statutes  of  a  considerable 
number  of  states,  which  forbid  the  sale  of  merchandise  for  the 
purposes  of  unfair  competition  at  one  price  in  one  part  of  the 
state,  and  at  another  price  in  another  part. 

The  Federal  Courts  have  condemned  as  unfair  the  local  cutting 
of  prices  in  connection  with  a  rate  war  by  towing  companies  on 
the  Great  Lakes,  considering  it  unfair  for  these  companies  to 
name  prices  in  one  harbor  for  the  purpose  of  disposing  of  com- 
petitors doing  business  in  that  harbor,  which  prices  were  lower 
than  those  at  which  they  were  rendering  the  same  service  in  other 
places.  ^^ 

§  302.  Where  the  Use  of  Cut  Prices  Accompanies  Unfair  or 
Inaccurate  Description  of  Goods.  —  It  is  an  unfair  method  of 
competition  to  place  a  cut  price  upon  goods,  and  at  the  same  time 
38  United  States  v.  Great  Lakes  Towing  Co.,  217  Fed.  656. 


5G8       Miscellaneous  Forms  of  Unfair  Competition 

to  make  statements  regarding  the  goods  so  offered  for  sale  which 
are  inaccurate  and  untrue. 

Recently  the  Connecticut  Courts  in  an  unreported  case  granted 
a  preliminary  injunction  where  a  shop  took  a  notion  out  of  its 
original  package,  and  repacked  it,  marking  it  "Special"  followed 
by  the  brand  name  of  the  article,  and  then  advertised  it  at  a  cut 
price.  The  pleadings  alleged  that  the  goods  were  the  regular 
goods  sold  under  the  brand  name  in  the  usual  course  of  business, 
were  merely  put  up  in  different  packages,  and  were  not  in  any 
sense  ''Special." 

§  303.  Competition  by  Unfair  Comparison  of  Prices.  —  In 
Europe  cases  exist  in  which  it  is  held  unfair  competition  to  ad- 
vertise at  a  price  less  than  a  normal  price  and  in  the  announce- 
ment of  the  price  to  call  attention  to  the  higher  prices  of  com- 
petitors for  the  same  goods. 

§  304.  Corporate  Stock;  Acquiring  for  Purpose  of  Unfair  Com- 
petition. —  Equity  will  not  assist  a  person  who  acquires  stock 
in  a  corporation  as  part  of  a  scheme  to  ruin  or  injure  the  business 
of  a  competitor. ^^ 

§  305.  Inducing  Breach  of  Contract  by  Offers  to  Save  Harm- 
less. —  It  is  unlawful  for  a  competitor  to  solicit  his  rival's  cus- 
tomers to  breach  their  contracts  on  the  understanding  that  they 

^^ Funck  V.  Elevator  Co.,  142  Iowa,  "In  the  light  of  the  evidence  the 

621.  plaintiff  does  not  stand   before  the 

Plaintiff    brought    mandamus    to  court  as  a  mere  purchaser  of  stock  in 

compel  defendant  company  to  trans-  the   defendant    company,    but   as   a 

fer  upon  the  books  of  the  company  conspirator  or  a  puppet  of  conspira- 

stock  owned  by  the  plaintiff  and  com-  tors,    working    in    conjunction    with 

pel  defendant  to  permit  plaintiff  to  many  others  by  unlawful  means  to- 

examine  its  books.    The  court  below  ward  an  unlawful  end.    A  conspiracy 

refused  an  order  permitting  plaintiff  usually,  often  necessarily,  involves  in 

to  examine  the  company's  books  but  its  details  many  lawful  acts;  that  is 

held  plaintiff  entitled  to  have  his  stock  to    say,    acts    which    in    themselves 

transferred  on  the  books  of  the  com-  would  be  lawful.    They  are  none  the 

pany.  less  unlawful  as  parts  of  the  plan  of 

It  appeared  that  plaintiff  was  act-  conspiracy.  It  is  our  conclusion,  there- 
ing  on  behalf  of  an  association  which  fore,  that  the  plaintiff  is  entitled  to  no 
was  attempting  to  obtain  information  aid  from  a  court  of  equity,  and  that 
concerning  the  defendant's  business  the  relief  prayed  for  should  be  re- 
in order  to  destroy  its  business  by  fused." 
means  of  boycott.  See  also   Gould  v.  Head,  41    Fed. 

Evans,  C.  J.,  writing  for  a  majority  240. 
of  the  court,  said: 


Inducing  Breach  of  Contract 


569 


will  suffer  no  damage  by  reason  of  their  failure  to  live  up  to  their 
undertaking.  ^° 

As  to  cases  involving  the  unlawful  procuring  of  goods  with 
which  to  compete,  at  cut  prices,  with  a  rival's  exclusive  sales 
agents,  see  Sections  174  and  175. 


*'>  Citizens'  Light,  Heat  &  Power  Co. 
V.  Montgomery  Light  &  Water  Power 
Co.,  171  Fed.  553.  The  parties  were 
competing  public  service  corporations. 
The  plaintiffs  sought  an  injunction 
against  the  alleged  acts  of  the  de- 
fendants,— false  representations  con- 
cerning plaintiff's  credit  and  ability  to 
do  business,  and  solicitation  of  plain- 
tiffs' customers  to  break  their  contracts 
and  trade  with  defendant,  unaccom- 
panied by  incitement  to  violence  to 
the  customer's  property  or  person. 
Held,  that  equity  would  not  enjoin 
these  acts,  but  that  it  would  restrain 
pendente  lite  defendant's  efforts  to 
indemnify  plaintiff's  customers  against 
liability  for  their  breaking  their  con- 
tracts with  plaintiff.  Jones,  D.  J., 
said:  "Hence,  while  the  law  allows  a 
trader,  by  mere  solicitation,  to  per- 
suade customers  to  change  their  busi- 
ness relations,  without  actionable 
liability  therefor,  though  a  broken 
contract   is   the   result,   it   does   not 


permit  such  a  solicitor,  even  in  the 
interests  of  competition,  to  go  further, 
intervening  actively  between  the  con- 
tracting parties,  as  a  dominant  agency 
in  producing  a  breach,  by  promise  of 
indemnity  to  one  of  them  to  induce 
the  breach.  When  the  solicitor  know- 
ingly and  intentionally  goes  beyond 
mere  solicitation,  to  induce  another 
man's  customer  to  do  business  with 
him,  and  promises  to  hold  that  other 
man's  customer  harmless  for  the 
breach  of  a  contract  with  him,  he 
transcends  the  rights  of  the  law  of 
competition,  has  no  'sufficient  jus- 
tification,' and  thereby  becomes  liable 
to  him  whose  customer  is  taken  over. 
Such  conduct  is  an  unlawful  inter- 
ference with  another  man's  rights, 
for  which  he  may  maintain  an  action 
and  recover  nominal  damages,  al- 
though the  contract  be  not  actually 
breached  in  consequence  of  the  soli- 
citation." 


CHAPTER  XX 
Pleading 

Section  306.  Joinder  of  causes  of  action. 

307.  Allegations  on  information  and  belief. 

30S.  Allegations  by  way  of  recital. 

309.  Facts,  not  conclusions,  to  be  alleged. 

310.  Certainty  and  particularity. 

311.  Jurisdictional  facts. 

312.  Answer. 

313.  Essential  allegations. 

314.  What  allegations  held  sufficient. 

315.  What  allegations  held  insufficient. 

3i6.  What  questions  may  be  raised  by  demurrer. 
317.  As  to  pleading  the  defense  of  "Unclean  hands." 

§  306.  Joinder  of  Causes  of  Action.  —  Causes  of  action  for  in- 
fringement of  trade-mark,  and  for  unfair  competition  (as  by  im- 
itating labels),  may  be  joined.^ 

In  the  United  States  courts  the  bill  may  join  causes  of  action 
for  infringement  of  patent  and  for  unfair  competition,  where  they 
are  based  upon  the  same  acts  and  transactions,  ^  but  not  where 

'  Jewish  Colonization  Assn.  v.  Sol-  allegations  of  infringement  with  aver- 

omon  &  Germanski,  125  Fed.  994.  ments  of  unfair  competition.    Indeed, 

G.  Heileman  Brewing  Co.  v.  Inde-  he  could  not  well  state  his  case  other- 
pendent  Brewing  Co.,  191  Fed.  489,  wise.  There  can  be  no  objection, 
C.  C.  A.  9th  Cir.  (1911).  "A  suit  therefore,  to  joining  the  two  causes  of 
for  unfair  competition  may  be  main-  suit  in  one  complaint,  and  it  is  true 
tained  where  there  is  no  lawful  also  that  he  might  succeed  in  one 
trade-mark  involved,  which  con-  cause  alone  and  fail  in  the  other.  By 
sists  essentially  in  palming  the  goods  fair  intendment  the  complaint  in  the 
of  one  manufacturer  or  vendor  off  for  present  cause  combines  both  elements 
the  goods  of  another.  *  *  *  j\^  of  fraud,  infringement,  and  unfair 
fortiori  a  suit  may  be  maintained  for  competition  in  trade."  See  also  Sam- 
unfair  competition  when  the  infringe-  son  Cordage  Works  v.  Puritan  Cordage 
ment  of  a  trade-mark  is  resorted  to  as  Mills,  211  Fed.  603. 
a  means  of  accomplishing  the  pur-  ^  Sayre  v.  McGill  T.  P.  Co.,  200 
pose.  *  *  *  In  gQch  a  case  it  is  Fed.  771;  Havens  v.  Burns,  188  Fed. 
altogether  appropriate  that  the  party  441;  T.  B.  Woods  Sons  Co.  v.  Valley 
claiming  to  bo  injured  should  conjoin  Iron  Works,  166  Fed.  770. 
570 


Allegations  on  Information  and  Belief  571 

the  acts  are  separate  and  distinct.^  The  bill,  however,  must 
allege  diverse  citizenship  to  show  jurisdiction  of  the  action  for 
unfair  competition.''  Causes  of  action  for  infringement  of 
trade-mark  and  of  copyright  may  be  joined,^  and  causes  of  ac- 
tion for  fraudulent  use  of  trade  secrets  and  for  unfair  competition 
based  upon  connected  acts.^ 

Causes  of  action  for  damages  under  Anti-Trust  Law  of  1890, 
and  for  injunction  against  infringement  or  unfair  uses  of  trade- 
mark or  trade  name,  cannot  be  joined  J 

§  307.  Allegations  on  Information  and  Belief . — Essential  facts, 
necessarily  within  complainant's  knowledge  (such  as  complainant's 
use  of  the  trade-mark,  the  fact  of  its  imitation,  without  license  or 
acquiescence  of  the  complainant),  must  be  alleged  positively, 
and  not  on  information  and  belief.^ 

§  308.  Allegations  by  Way  of  Recital.  —  Where  an  essential  fact 
appeared  by  necessary  implication  (though  in  form  a  recital),  such 
a  statement  is  good  against  a  general  demurrer.^ 

§  309.  Facts,  not  Conclusions,  to  be  Alleged.  —  The  bill  of 
complaint  in  an  action  for  unfair  competition,  must  set  out  the  facts 
upon  which  the  action  is  based.  The  essence  of  the  wrong  in  such 
an  action  is  fraud.  No  fraudulent  intent  need  be  proved,  but  facts 
must  be  alleged  which  will  justify  a  court  in  reaching  the  conclusion 
that  the  defendant  has  acted  fraudulently.  A  pleading  setting  out 
conclusions  without  setting  out  the  facts  which  support  the  con- 
clusion is  bad.^°    Accordingly  in  an  action  of  this  character,  al- 

^  Ball  &  Socket  F.  Co.  v.  Cohn,  90  of  the  column  the  words  'Published 

Fed.  664,  by  the  Investor  Publishing  Company, 

*  C.  L.  King  &  Co.  v.  Inlander,  133  Incorporated,'  "  deemed  equivalent  to 
Fed.  416.  a  direct  allegation  that  they  did  print 

5  Harper  v.  Holman,  84  Fed.  222.  those  words. 

(Opinion   discusses  the   principle  on  ^°  Motion    Picture    Patents    Co.    v. 

which   questions   of   multifariousness  Eclair  Film  Co., 208Fed.  416.    "Fraud 

are  decided.)  is  at  the  root  of  all  actionable  unfair 

^  James  B.  Sipe  &  Co.  v.  Columbia  competition;  and,  as  no  intendment  is 

Refining  Co.,  171  Fed.  295.  made  in  favor  of  fraud,  the  facts  (but 

^  Block    V.    Standard    Distilling    &  not  the  mere  evidence  thereof)  upon 

Distributing  Co.,  95  Fed.  978.  which  such  a  charge  is  predicated  must 

» Gaines  &  Co.  v.  Sroufe,  117  Fed.  be  set  forth  distinctly  and  with  as 

965.  much  particularity  as  the  nature  of 

*  Investor  Pub.  Co.  v.  Dobinson,  the  transactions  involved  and  the 
72  Fed.  603-1896,  "That  defend-  circumstances  in  which  they  have 
ants    *    *    *    by  printing  at  the  head  their  being  or  development  are  within 


572  Pleading 

leging  simply  that  if  the  defendant  be  allowed  to  continue  the 
display  of  signs,  or  signs  of  like  import  and  meaning,  that  the 
plaintiff  will  suffer  irreparable  damage,  has  been  held  insufficient.'^ 
Similar  rulings  have  been  made  where  a  pleading  set  out  that 
certain  acts  were  "wrongfully"  done,  where  the  acts  themselves, 
so  far  as  could  be  seen  from  the  facts  alleged,  were  not  wrongful.'^ 
§310.  Certainty  and  Particularity.  —  In  an  action  in  which 
registration  of  a  trade-mark  is  an  essential  clement,  the  date  of 
the  registration  should  be  alleged  in  order  to  negative  the  possible 
inference  of  the  loss  of  the  rights  arising  under  the  registration  by 
lapse  of  time."  A  bill  of  complaint  in  an  action  for  unfair  compe- 
tition based  on  the  imitation  of  the  form,  appearance  and  orna- 
mentation of  the  complainant's  product,  should  "describe  or  state 
in  what  such  ornamentation  consists,"  for  without  such  allega- 
tions the  complaint  states  conclusions,  not  facts.  Failure  to  make 
the  proper  allegations  may  be  cured,  however,  by  submitting  in 
evidence  the  imitated  and  imitating  articles  as  part  of  the  bill  of 
complaint.  In  such  a  case  the  "exhibits  supersede  the  conclusions 
stated  in  the  bill  and  qualify  the  general  broad  allegations."  '"*  In 
a  case  in  which  it  is  necessary  to  allege  that  the  defendant  has 
used  a  trade  name  with  intent  to  deceive  the  public  a  statement 
in  the  complaint  that  use  of  the  trade  name  by  the  defendant  is 
"calculated  to  deceive"  is  of  no  avail.  Such  an  averment  does 
not  mean  or  include  intent  to  deceive.'^  An  answer  in  an  action 
for  infringement  of  a  trade-mark  setting  up  prior  use  of  the  al- 
leged trade-mark  by  persons  other  than  the  complainant,  need 
not  specify  the  names  of  the  prior  users,  ^^  and  in  an  action  for 
unfair  competition  a  complaint  which  states  that  "On  divers  days 
and  at  divers  places  "  the  particular  acts  constituting  the  cause  of 
action  were  committed  within  the  jurisdiction  of  the  court  was 
sustained  against  demurrer.'^ 

complainant's    knowledge    or    could         ^^  Gaines  &  Co.  v.  Sroufe,  117  Fed. 

have  been  ascertained  by  his  employ-  965. 

ing  such  means  as  were  at  his  com-         ^*  Allen  v.  Walton  Wood  &  Metal 

mand."  Co.,  178  Fed.  287. 

"  Longenecker  v.  Longenecker  Bros.,         '^  Industrial    Press    v.    W.    R.    C. 

140  N.  Y.  Supp.  403.  Smith  Pvb.  Co.,  164  Fed.  842. 

>=  Lothrop  Pub.  Co.  v.  Lothrop  L.  &         "  Gorham  Mfg.   Co.  v.   Weintraub, 

S.  Co.,   191  Mass.  353;   Van  Kannel  180  Fed.  639. 

Revolving  Door  Co.  V.  American  Revolv-         ^'' Chas.  E.  Hires  Co.  v.  Simpkins, 

ing  Door  Co.,  215  Fed.  582.  179  Fed.  1012  (ruling  on  demurrer). 


Jurisdictional  Facts  573 

In  a  suit  to  restrain  a  person  from  disclosing  secret  processes  of 
manufacture,  the  complainant  need  not  specify  the  particular 
process  sought  to  be  restrained/^  and  in  a  suit  to  restrain  defend- 
ants from  combining  with  complainant's  agents  and  interfering 
with  his  contract  rights,  it  is  not  necessary  to  enumerate  in  the 
complaint  the  particular  persons  dealt  with  by  the  defendants, 
especially  where  it  is  probably  impossible  for  complainant  to 
ascertain  them.^" 

In  an  action  for  unfair  competition  based  on  the  fraudulent  use 
of  complainant's  product,  the  amount  and  value  of  the  article,  the 
names  of  the  defendant's  agents  or  of  the  parties  buying  the  same 
need  not  be  alleged. ^^ 

§  311.  Jurisdictional  Facts.  —  Jurisdictional  facts,  such  as  di- 
versity of  citizenship  should  be  pleaded  in  an  action  for  unfair 
competition  brought  in  the  Federal  Court,  or  in  an  action  brought 
in  that  court  for  the  infringement  of  a  trade-mark  not  based 
on  the  Federal  Trade-mark  Act.  In  an  action  brought  under  the 
Federal  Act  use  of  the  trade-mark  in  interstate  commerce  is  an 
essential  allegation. ^^ 

An  allegation  that  a  party  to  a  suit  is  a  "citizen  of  the  United 
States  and  a  resident  of  "  a  particular  state  has  been  held  sufficient 
as  an  allegation  of  citizenship  of  that  state. ^^  Diversity  of  citi- 
zenship may  be  sufficiently  shown  in  a  complaint  by  recited  facts, 
instead  of  by  direct  and  expHcit  allegations.^^ 

In  an  action  in  the  Federal  Courts  where  jurisdiction  depends 
on  the  amount  in  controversy  a  complaint  brought  to  restrain 
the  unfair  use  by  the  defendant  of  complainant's  trade  name, 
which  states  the  value  of  the  trade  name  to  be  in  excess  of  $5000 
but  makes  no  charge  as  to  the  amount  of  damages  arising  from  the 
defendant's  acts  and  which  fails  to  state  that  the  complainant's 
trade  name  will  be  destroyed  or  placed  in  jeopardy,  is  demurrable. 
The  court  cannot  assume  from  such  a  statement  that  the  damages 
are  in  excess  of  the  amount  prescribed  by  the  rules  which  in  this 
case  was  $2000, ^^  but  in  a  suit  brought  for  an  injunction  and 

18  S.  iS.  White  Dental  Mfg.  Co.  v.  ^^  Margarete    Steiff     v.    Birig,    206 

Mitchell,  188  Fed.  1017.  Fed.  900. 

^^  Dr.  Miles  Medical  Co.  v.  Jaynes  ^s  Gorham  Mfg.  Co.  v.   Weintraub, 

Drug  Co.,  149  Fed.  838-1906.  176  Fed.  927. 

*"  Hires  v.  Simpkins,  179  Fed.  1012.  ^4  Winchester  Repeating  Arms  Co.  v. 

21  Warner  v.  Searle  &  Hereth  Co.,  191  Butler  Bros.,  128  Fed.  976. 
U.  S.  195.. 


574  Pleading 

accounting  depending  for  jurisdiction  on  the  same  facts  a  demurrer 
to  the  complaint  on  the  ground  ''that  there  is  no  averment  that 
the  alleged  acts  of  the  respondents  have  damaged  complainants 
in  any  sum  of  money;  and  that  damages  to  the  extent  of  $2000 
must  be  alleged  in  order  to  give  the  court  jurisdiction,  etc.,"  was 
overruled,  the  court  holding  that  in  such  cases  the  amount  in 
dispute  is  the  value  of  the  object  to  be  gained  by  the  bill  and  as  the 
property  to  be  protected  in  the  suit  was  complainant's  trade- 
mark which  was  alleged  to  be  of  the  value  of  $2000,  the  allegation 
of  the  amount  of  damages  was  unnecessary.  ^^  In  an  action 
brought  to  restrain  the  infringement  of  a  trade-mark  registered 
under  the  Act  of  1905  where  both  parties  are  residents  of  the 
same  state,  an  allegation  that  a  trade-mark  has  been  registered 
under  the  provisions  of  the  act  of  Congress  ''may  be  taken  to 
include  an  averment  of  all  the  facts  necessary  to  found  the  right 
of  the  plaintiff  to  the  trade-mark  registration,  and  therefore  to 
include  the  averment  of  an  interstate  use  of  the  trade-mark  by 
the  plaintiff "  but  an  allegation  that  defendant  has  induced  pur- 
chasers to  take  the  product  of  the  defendant  under  the  beHef  that 
it  was  the  product  of  the  plaintiff,  and  thereby  "it  has  caused  in 
this  district  and  elsewhere  throughout  the  United  States  great  and 
irreparable  injury  to  the  plaintiff,"  is  not  a  sufficient  averment  of 
interstate  use,  actual  or  threatened,  by  the  defendant  and  such  a 
bill  will  be  dismissed  for  want  of  jurisdiction.-^ 

§  312.  Answer.  —  In  an  action  to  restrain  the  violation  of  an 
alleged  trade-mark,  an  answer  which  sets  up  prior  use  of  the 
mark  by  the  defendant  is  directly  responsive  to  the  allegations  of 
the  complaint,  2^  and  the  defendant  was  given  the  benefit  of  the 
rule  in  equity  practice,  that  where  the  complainant  sees  fit  to  put 
the  defendant  on  oath  in  his  answer,  such  answer  has  such  force 
as  evidence  in  behalf  of  the  defendant  that  the  burden  is  cast  upon 
the  complainant  to  overcome  it  by  the  testimony  of  two  wit- 
nesses, or  one  witness  corroborated  by  other  facts  and  circum- 
stances that  persuasively  outbalance  such  sworn  answer. ^^  Under 
the  New  York  Code  of  Civil  Procedure,  in  an  action  to  restrain 
unfair  competition,  the  defendant  may  plead  by  supplemental 
answer  facts  which  came  into  existence  subsequent  to  the  former 

"  Henmssy  v.  Herrman,  89  Fed.  669.  ^7  Uri  y.  Hirsch,  123  Fed.  568. 

2«  Louis    Bcrgdull    Brewing    Co.    v.  "s  u^i  v.  Hirsch,  123  Fed.  568. 

Bergdoll  Brewing  Co.,  218  Fed.  131. 


Essential  Allegations  575 

pleading,  even  though  the  plea  if  proven  cannot  constitute  a  com- 
plete defense  and  may  not  be  at  all  material,  if  it  is  possible  that 
some  of  the  acts  of  unfair  competition  may  be  justified.  Such 
pleading  is  not  manifestly  bad  or  frivolous.^' 

§  313.  Essential  Allegations.  —  In  an  action  based  on  the  in- 
fringement of  a  trade-mark,  the  complaint  must  contain  an 
allegation  setting  out  the  ownership  of  the  trade-mark  involved, 
especially  where  there  are  several  plaintiffs  ^°  and  an  allegation 
showing  competition  in  the  same  class  of  trade. ^^ 

In  an  unfair  competition  case  an  allegation  to  the  effect  that 
defendant's  goods  are  so  marked  as  to  deceive  the  public  has  been 
held  insufficient  on  demurrer.  The  complainant  in  order  to  state 
a  cause  of  action  must  in  addition  show  that  the  goods  are  so 
marked  as  to  mislead  the  public  into  accepting  them  as  those  of 
the  complainant.^^  When  such  an  action  is  based  upon  the  imita- 
tion of  the  form  and  appearance  of  plaintiff's  goods,  the  complain- 
ant should  allege  not  merely  the  imitation,  but  that  the  particular 
form  imitated  had  come  to  be  known  to  the  purchasing  pubhc 
as  an  indication  of  the  origin  of  the  plaintiff's  goods,  and  that 
confusion  has  resulted  in  the  public  mind  by  reason  of  the  imita- 
tion.^^ A  case  of  unfair  competition  by  substitution  is  not  stated 
where  the  pleading  is  to  the  effect  that  the  defendant  has  caused 
persons  to  believe  that  the  goods  kept  and  offered  for  sale  and  sold 
by  the  defendant  were  of  the  plaintiff's  manufacture.  Mere  behef 
is  immaterial  unless  acted  on.^^ 

§  314.  What  Allegations  held  Sufficient.  —  Allegations  from 
which  fraudulent  intent  and  resulting  damage  may  be  inferred 
may  be  sufficient  against  demurrer,  though  such  intent  and  dam- 
age are  not  expressly  alleged. ^^ 

General  allegations  of  intent  to  deceive,  imitation  in  certain  re- 

^^  Silver  &  Co.  v.   Waterman,   122  ^^  Sayre  y.  McGill  Ticket  Punch  Co., 

App.  Div.  (N.  Y.)  373.  200  Fed.  771. 

^"  Pennell   v.    Lathrop,    191    Mass.  ^*  Winchester  Repeating  Arms  Co.  v. 

357.  Butler  Bros.,    128   Fed.   976.      (Mail 

'1  Longenecker  v.  Longenecker  Bros.,  order  business  —  advertising  compet- 

140  N.  Y.  Supp.  403.   And  see  British-  iter's  goods  and  filling  orders  with 

American    Tobacco    Co.    v.    British-  others.) 

American  Cigar  Stores  Co.,  206  Fed.  "  Industrial  Press  v.  W.  R.  C.  Smith 

189.  Puh.  Co.,  164  Fed.  842-1908  (C.  C.  A.) ; 

'2  American  Washboard  Co.  v.  Sagi-  Merriam  v.  HoUoway  Pub.    Co.,    43 

naw  Mfg.  Co.,  103  Fed.  281.  Fed.  450. 


576  Pleading 

spects  of  name  and  of  appearance  of  product,  and  deception  of 
public,  are  sufficient  to  charge  fraud  and  state  a  cause  of  action 
for  unfair  competition.^^ 

iVIlegation  of  sale  by  defendants  of  a  preparation  of  a  similar 
kind  under  similar  name,  together  with  allegation  of  substitution 
of  defendant's  goods  when  customers  asked  for  complainant's  is 
sufficient.'" 

Allegations  of  various  similarities  in  dress,  and  that  these  were 
imitations  adopted  for  the  purpose  of  "taking  advantage  of  the 
reputation"  of  complainant,  have  been  deemed  sufficient. ^^ 

Alleging  the  adoption  of  a  similar  corporate  name  would  not 
state  a  cause  of  action;  but  if  fraudulent  intent  in  the  adoption, 
and  also  resulting  injury,  are  alleged,  the  pleading  is  sufficient 
against  demurrer. ^^ 

§  316.  What  Allegations  held  Insufficient.  —  Alleging  that  after 
plaintiff's  product  had  long  been  known  by  the  trade-mark 
"Gargline,"  defendant  put  on  the  market  a  similar  product  by 
the  name  "Gargeline,"  etc.,  without  alleging  either  fraudulent  in- 
tent, actual  deception  of  public,  or  resulting  loss  to  complainant,  — 
held  insufficient.'*'^ 

Alleging  that  orders  for  complainant's  goods  were  filled  with 
other  goods,  thereby  deceiving  purchasers  and  injuring  complain- 
ant's business,  held  insufficient.  It  should  have  been  more  dis- 
tinctly alleged  that  such  orders  were  filled  with  other  goods  as 
and  for  those  of  complainant."*^ 

Allegation  of  the  transfer  of  a  trade-mark  merely  is  not  suffi- 
cient; the  transfer  of  the  business  also  should  be  alleged.''^ 

§  316.  What  Questions  May  Be  Raised  by  Demurrer.  — 
A  demurrer  raises  a  question  of  law  and  is  directed  to  the  suf- 
ficiency of  the  complaint.  A  defect  upon  the  face  of  a  bill  is 
met,  not  by  plea,  but  by  a  demurrer. ^^ 

Where  the  complaint  is  based  upon  the  fraudulent  infringement 
of  a  trade-mark  a  defendant  by  demurrer  confesses  the  fraud 

39  Putnam  Nail  Co.  v.  Bennett,  43  «  Woodcock  v.  Guy,  33  Wash.  234. 

Fed.  800.  ■"  Winchester  Repeating  Arms  Co.  v. 

"  M.  J.  Breitenhach  Co.  v.  Spangen-  Butler  Bros.,  128  Fed.  976. 

berg,  131  Fed.  160.  "-  Bulte  v.  Igleheart  Bros.,  137  Fed. 

'«  Ellis  V.  Zeilin  &  Co.,  42  Ga.  91-  492  (C.  C.  A.). 

1871.  "  Hostetter  Co.  v.  E.  G.  Lyons  Co., 

»  Plant  Seed  Co.  v.  Michel  Plant  &  99  Fed.  734. 
Seed  Co.,  23  Mo.  App.  579-1886. 


Pleading  Defense  of  "Unclean  Hands"  577 

and  if  the  demurrer  is  overruled,  such  confession  entitles  the 
plaintiff  to  an  inj unction.  ^^  In  such  an  action  if  it  is  clearly 
evident  to  the  court  that  there  has  been  no  infringement  he  may 
dismiss  the  bill  of  complaint  upon  demurrer,  or  its  modern  equiv- 
alent of  motion.'*^ 

The  question  of  the  invalidity  of  a  trade-mark  as  being  non- 
appropriable,  e.  g.,  as  a  geographical  word,  cannot  ordinarily  be 
raised  by  demurrer.'**  If  the  rule  were  otherwise  a  demurrer 
would  lie  on  the  theory  that  the  trade-mark  claimed  is  invalid, 
because  descriptive.  This  would  be  overcome  by  an  allegation 
of  secondary  meaning.  ^^ 

The  court  will  not  readily  decide,  merely  from  the  form  used 
as  a  trade-mark,  that  it  is  descriptive  and  invalid,  especially 
where  it  is  alleged  to  be  an  arbitrary  and  fanciful  word.^^ 

Where  the  language  of  the  bill  is  sufficient,  a  demurrer  will 
not  be  sustained  on  inspection  of  the  accompanying  exhibits,  un- 
less these  are  clearly  inconsistent  with  the  language  of  the  bill.^^ 

But  where  the  two  trade-marks  in  question  are  attached  to  the 
complaint,  and  are  so  palpably  dissimilar  as  to  contradict  the 
allegations  of  the  complaint,  a  demurrer  may  be  sustained.  ''But 
to  justify  such  a  ruling  the  dissimilarity  should  be  so  marked  as  to 
leave  no  doubt  in  the  mind  of  the  court."  ^^ 

A  bill  of  complaint  will  be  sustained  upon  demurrer,  if  its  alle- 
gations entitle  the  plaintiff  to  some  relief,  although  not  to  the 
whole  relief  prayed  for.^^ 

§  317.  As  to  Pleading  the  Defense  of  "  Unclean  Hands."  —  The 

■»^  Enoch    Morgan's    Sons'    Co.    v.  *''  Standard  Varnish  Works  v.  Fisher 

Hunkele,  8  Fed.  Cases,  724  (Case  No.  T.  &  Co.,  153  Fed.  928. 

4493).  ^  M.  J.  Breitenbach  Co.  y.  Spangen- 

«  Sprigg  v.  Fisher,  222  Fed.  964.  berg,  131  Fed.  160. 

^^  Jewish  Colonization  Assn.  v.  Solo-  ^^  Bluthenthal  &   Bickart  v.   Mohl- 

vwn,  125  Fed.  994.    But  the  contrary  maun,  49  Fla.  275-1905. 

seems  to  be  held  in  Los  Angeles  Cream-  5°  Leidersdorf  v.  Flint,  50  Wis.  401- 

ery  Co.  v.  J.  R.  Neivberrij  Co.,  21  Cal.  1880. 

Ct.  App.  567;  132  Pac.  289  ("Santa  ^'  Merriam  v.  Holloway  Pub.  Co.,  43 

Ana   butter"  —  geographical   name).  Fed.   450;  Holeproof  Hosiery  Co.   v. 

So,  also,  in  Lamont  v.  Leedy,  88  Fed.  Richmond  Hosiery  Mills,  167  Fed.  381 

72,  in  which  the  registered  trade-mark  (bill  not  demurrable  because  certain 

"Crystallized  Egg"  was  regarded  as  words,  used  together,  and  complained 

obviously   descriptive   and    unappro-  of,  might  legally  be  used  separately); 

priable.  Investor  Pub.  Co.  v.  Dobinson,  72  Fed. 


578  Pleading 

defense  of  ''unclean  hands"  need  not  necessarily  be  pleaded ;''2 
but  the  court  will  less  readily  sustain  this  defense,  where  it  is 
not  pleaded,  as  then  complainant  is  not  prepared  to  meet  it.''^ 

"In  order  that  a  defendant  may  raise  the  question  it  must 
be  pleaded,  unless  the  facts  and  circumstances  appearing  in  the 
case  are  such  as  would  authorize  the  court,  of  its  own  motion,  to 
take  notice  of  the  fraud  and  deceit  on  the  part  of  a  person  seeking 
its  protection.^'* 

603,  610;  California  Fig  Syrup  Co.  v.         ^*  Layton  Pure  Food  Co.  v.  Church  & 

Improved  Fig  Syrup  Co.,  51  Fed.  296.  Dwight  Co.,  182  Fed.  24,  32. 

62  Memphis  Keely  Institute  v.  Leslie  ^*  Folk  v.  American  W.  I.  T.  Co.,  71 

E.  Keely  Co.,   155  Fed.  964;   Uri  v,  App.  Div.  320  (citing  Fleischmann  v. 

Hirsch,  123  Fed.  568.  Fleischmann,  7  App.  Div.  280). 


CHAPTER  XXI 
Evidence 

Section  318.  Intent  of  defendant. 

319.  Difference  between  proof  of  cases  involving  a  fanciful  name,  or 

mark,  and  one  involving  secondary  meaning. 

320.  Evidence  connected  with  comparison  of  names  or  marks  used  by 

the  parties  —  similarity. 

321.  What  is  similarity? 

322.  Test  of  similarity  is  general  impression  made,  not  detailed  exam- 

ination. 

323.  Similarity  does  not  mean  exact  likeness. 

324.  Care  used  by  average  buyer  of  the  class  of  article  in  question  must 

be  considered. 

325.  Character  of  the  article,  and  the  habits  and  intelligence  of  the 

consumer. 

326.  Side  by  side  comparison  in  the  court  room  is  not  a  proper  final 

test  of  similarity. 

327.  Evidence  that  the  proportion  of  buyers  of  any  article  likely  to  be 

deceived  by  defendant's  acts  is  small,  is  not  a  defense. 

328.  Imitation  of  salient  features. 

329.  Necessary  physical  requirements  of  the  article  must  be  considered. 

330.  Distance  between  competitors  a  factor  in  deciding  as  to  similarity. 

331.  Deceit  of  ultimate  purchaser,  not  of  middleman,  is  the  important 

consideration. 

332.  Similarity  of  color,  shape,  size,  etc. 

333.  Similarity  of  names. 

334.  Evidence  to  prove  secondary  meaning. 

335.  Proof  of  instances  of  actual  bona  fide  deceit  of  purchasers. 

336.  Burden  of  proof. 

337.  Evidence  of  investigators  employed  by  plaintiff. 

338.  Loss  of  business  by  complainant  as  evidence. 

339.  Time  —  presumption  of  continuance. 

340.  Judicial  notice. 

341.  Weight  and  credibility  of  evidence. 

342.  Discovery  and  examination  before  trial. 

343.  Evidence  of  acts  of  employees. 

344.  Evidence  of  registration,  effect  of. 

345.  Evidence  as  to  use  of  a  trade-mark. 

346.  Inferences  and  presumptions. 

No  attempt  will  be  made  here  to  discuss  the  general  rules  of 
evidence.    Unfair  competition  cases  do,  however,  involve  several 

579 


580  Evidence 

]irobleiiis  of  proof  somewhat  peculiar  to  themselves  and  these 
will  be  considered  below. 

§  318.  Intent  of  Defendant.— The  necessity  of  proving  fraud 
or  fraudulent  intent  is  fully  discussed  in  the  chapter  on  "Intent," 
to  which  the  reader  is  referred.  The  argument  which  is  so  often 
made  for  defendants  in  these  cases,  that  plaintiff  has  failed  to 
prove  specific  fraud  and  fraudulent  intent  on  defendant's  part  is 
to  argue  in  effect  that  the  defendant's  acts  are  no  doubt  unfair 
to  the  plaintiff,  but,  as  the  defendant  did  not  specifically  intend 
by  such  acts  to  injure  the  plaintiff  no  action  lies.  The  court  does 
not  so  view  the  matter.  If  the  court  finds  that  the  defendant's 
acts  are  unfair  to  plamtiff,  it  will  presume  as  a  matter  of  law  that 
these  acts  were  done  with  fraudulent  intent,  not  because  the 
court  knows  the  state  of  the  defendant's  mind  but  because  every 
person  is  presumed  to  intend  the  natural  consequences  of  all  his 
acts,  knowingly  committed.  The  question,  therefore,  is  not  the 
mental  state  of  the  defendant  but  the  effect  of  the  defendant's 
acts  on  the  plaintiff's  business.  "It  is  always  a  question  of  fraud, 
but  not  necessarily  of  actual  fraud.  The  act,  however  innocent, 
y  is  considered  constructively  fraudulent,  if  the  result  would  tend 
to  unfair  trade,  to  confusion  of  goods,  and  to  interference  with  the 
rights  of  another."  ^ 

This  is  really  the  whole  of  the  much  discussed  question  of  proof 
of  intent  in  unfair  competition  cases.  Furthermore  this  is  the 
only  practicable  workable  rule.  It  is  almost  impossible  to  prove 
intent.  To  demonstrate  the  state  of  another  person's  mind  is  al- 
most an  impossibility.  The  proof  therefore  as  to  the  "intent" 
of  the  defendant  is  complete  with  proof  of  what  he  has  actually 
done. 
.The  application  of  this  rule  is  seen  in  the  following  case: 

The  defendant  had  sold  three  bottles  of  whiskey,  with  com- 
plainant's trade-mark,  "W.  H.  IMcBrayer,"  to  detectives,  which 
whiskey  was  not  genuine  whiskey  of  this  brand.  It  also  ap- 
peared that  defendant  had  in  his  possession  a  quantity  of  labels 
carrying  complainant's  mark.     Adams,  J.,  said: 

"Our  conclusion  is  that  the  facts  in  evidence,  with  the  rea- 
sonable inferences  which  common  experience  and  observation 
require  us  to  draw  from  them,  disclose  a  continuing  menace  to 

'  Manitowoc    PeOrPacking     Co.     v.      Nunisen  &   Sons,  93   Fed.    196-1899 

(C.  C.  A.  7th  Cir). 


Fanciful  Marks  and  Secondary  Meaning  581 

complainant's  business,  which,  under  familiar  principles  of  equity, 
entitles  it  to  injunctive  relief,"  -  pages  393-4. 

§  319.  Difference  between  Proof  of  Cases  Involving  a  Fanci- 
ful Name,  or  Mark,  and  one  Involving  Secondary  Meaning.  — 
When  proof  is  exhibited  that  a  fanciful  name  is  already  in  use 
as  a  trade-mark  and  further  proof  that  after  such  use  commenced 
another  person  began  to  use  it  as  his  trade-mark  on  the  same 
class  of  goods,  the  court  will  presume  that  the  second  person  acted 
with  fraudulent  intent. 

Where  the  name  so  used  is  not  fanciful  but  is  used  by  the 
plaintiff  or  by  the  public  to  refer  to  the  plaintiff's  goods  and  in 
such  a  manner  as  to  give  to  the  word  a  secondary  or  trade  mean- 
ing, proof  must  be  exhibited  to  show  that  the  defendant's  use  of 
the  name  is  not  in  its  natural  meaning  but  in  its  trade  or  secondary 
sense.  In  such  case,  the  defendant's  fraud  will  not  be  presumed 
from  the  mere  similarity  of  the  two  names;  the  plaintiff  must 
also  prove  the  existence  of  the  secondary  meaning  of  the  name 
he  is  using. 

§  320.  Evidence  Connected  with  Comparison  of  Names  or 
Marks  Used  by  the  Parties  —  Similarity.  —  Unfair  competi- 
tion cases  usually  involve  a  comparison  by  the  court  of  the 
name  or  marks  used  by  the  plaintiff  with  those  used  by  the 
defendant.  These  may  be  termed  questions  of  similarity.  In  the 
first  edition  of  this  book  the  cases  in  which  this  question  of  sim- 
ilarity is  discussed  were  placed  in  a  chapter  entitled  ''What  is  Sim- 
ilarity? "     In  the  present  edition  they  will  be  found  in  this  chapter. 

It  has  been  said  that  proof  of  imitation  or  similarity  rests  in 

(1)  character  of  the  merchandise  on  which  the  marks  are  used; 

(2)  use  to  which  the  merchandise  is  put;  (3)  kinds  of  people  who 
order  it;  (4)  manner  in  which  they  order  it.^ 

These  and  similar  questions  must  be  considered  in  order  to 
arrive  at  an  accurate  understanding  of  the  rules  of  evidence  in 
these  cases. 

§321.  What  is   Similarity? — *' Similarity,    not   identity,    is 

2  Julius  Kessler  &  Co.  v.  Goldstrom,  Pneumatic   Tool  Co.,   118  Fed.   852; 

177  Fed.  392-1910  (C.  C.  A.  8th  Cir.).  Badische  Anilin   &   Soda   Fahrik   v. 

Similar  proof  has  been  held  to  justify  Klipstein  &  Co.,  125  Fed.  543. 

an  injunction  in  the  following  cases:  ^  Ligget    &    Myer    Tobacco   Co.    v. 

Lever  Bros.  v.  Pasfield,  88  Fed.  484;  Hynes,  20  Fed.  883. 
Chicago  Pneumatic  Tool  Co.  v.  Phila. 


582  Evidence 

the  usual  recourse,  where  one  party  seeks  to  benefit  himself  by 
the  good  name  of  another."  "^ 

This  statement  of  Judge  Bradley  has  become  an  axiom  of  Unfair 
Competition  Law.  It  is  with  this  sort  of  similarity,  that  this 
chapter  deals. 

So  long  as  there  are  many  chancellors,  so  long  will  their  opinions 
on  such  a  question  differ.  The  New  Jersey  court  of  equity  has 
laid  down  the  following  rule:  "If  the  counterfeit  so  closely  re- 
sembles the  genuine  as  to  mislead  ordinary  purchasers,  buying 
with  the  care  usually  exercised  in  such  transactions,  the  use  of  the 
counterfeit  should  be  prohibited.  An  important  part  of  this 
rule,  as  it  applies  to  this  case,  is  that  clause  of  it  which  directs 
that,  in  determining  whether  the  counterfeit  so  closely  resembles 
the  genuine  as  to  be  hkely  to  deceive  the  ordinary  buyer,  the  court 
must  take  into  consideration  the  degree  of  care  which  buyers 
usually  exercise  in  buying  such  an  article  as  that  which  is  the 
subject  of  the  distinguishing  mark;  for  it  is  a  matter  of  common 
knowledge  that  the  ordinary  buyer  does  not,  as  a  general  rule, 
exercise  as  much  caution  in  buying  an  article  for  which  he  pays  a 
few  pennies  as  he  does  in  purchasing  a  more  valuable  thing.  The 
instances  are  very  rare,  I  suppose,  where  a  purchaser  exercises 
as  much  care  in  buying  a  bottle  of  beer  as  he  does  in  buying  a 
bottle  of  whiskey,  a  box  of  cigars,  or  a  hat  or  a  coat."  ^  In  Pay  ton 
&  Co.  V.  Snelling,  Lampard  &  Co.,^  Lord  Macnaghten  said:  *'I 
think  it  is  very  desirable  to  bear  in  mind  what  Lord  Cranworth 
said  on  one  occasion  —  that  no  general  rule  can  be  laid  down  as 
to  what  is  a  colorable  imitation  or  not;  you  must  deal  with  each 
case  as  it  arises,  and  have  regard  to  the  circumstances  of  the 
particular  case." 

"What  degree  of  resemblance  is  necessary  to  constitute  an 
infringement  is  incapable  of  exact  definition,  as  appUcable  to  all 
cases.  All  that  courts  of  justice  can  do,  in  that  regard,  is  to  say 
that  no  trader  can  adopt  a  trade-mark,  so  resembling  that  of 
another  trader,  as  that  ordinary  purchasers,  buying  with  ordinary 
caution,  are  hkely  to  be  misled."  ^" 

§  322.  Test  of  Similarity  is  General  Impression  Made,  Not 
Detailed  Examination.  —  In  deciding  as  to  what  is  or  is  not 

*  Celluloid  Mfg.  Co.  v.  Cclloniie  N.  J.  Eq.  164-1892,  at  page  169. 
Mfg.  Co.,  32  Fed.  94  at  p.  97.  o"  Kroppf  v.  Furst,  94  Fed.  150. 

MFiVte   V.    Eagle   Bollling   Co.,    .50  « (1901)  App.  Cas.  308-10. 


Test  of  Similarity  is  General  Impression  Made    583 

similar,  the  court  should  not  depend  on  elaborate  description 
of  the  points  of  resemblance  or  those  of  difference;  but  should 
decide  by  the  impression  created  by  the  name  or  mark  on  the 
ear  or  eye/  thus  deciding  the  question  on  the  same  basis  as  the 
purchaser  who,  in  ordinary  course  of  trading,  is  called  upon  to 
judge  as  to  the  identity  of  the  defendant's  name.  It  should  be 
said  here  also  that  the  buyer  usually  has  not  the  chance  of  trial 
by  side-by-side  comparison.  Test  of  identity  is  not  whether 
a  difference  is  recognized  when  the  two  competing  articles  are 
placed  side  by  side,  but  whether  it  will  be  recognized  by  a  pur- 
chaser when  not  having  opportunity  to  compare.^  Such  simi- 
larity as  will  deceive  is  that  likeness  which  renders  the  average 
buyer  unable  to  distinguish  the  defendant's  name  or  mark  from 
the  memory  of  the  plaintiff's  name  which  he  carries  in  his  mind, 
not  such  as  will  enable  him  to  know  them  apart  when  the  two  are 
put  side  by  side  before  him. 

Lord  Russell,  in  Liehig^s  Extract  of  Meat  Co.  v.  Chemists  Co- 
operative Society,  decided  by  the  British  Court  of  Appeal  No- 
vember 20,  1896,^  held  that  ''one  must  be  guided  very  largely 
by  the  judgment  one  forms  by  the  use  of  one's  own  eye- 
sight." 

Fischer  v.  Blank  ^^  holds  that  similarity  is  such  resemblance 
as  "is  calculated  to  deceive,  and  does,  in  fact,  deceive  the  or- 
dinary buyer  making  his  purchases  under  the  ordinary  conditions 
which  prevail  in  the  conduct  of  the  particular  traffic  to  which  the 
controversy  relates.  No  inflexible  rule  can  be  laid  down.  Each  case 
must  in  a  measure  be  a  law  unto  itself."  "    It  has  often  been  held, 

'  See  Liggett  &  Myers  Tobacco  Co.  power  with  a  wise  and  judicial  discre- 

V.  Finzer,  128  U.  S.  182.  tion.    In  cases  such  as  this,  it  should 

*  McDonald  v.    Mueller,    183   Fed.  presume  that  the  public  makes  use  of 

972-1910.  the  senses  of  sight  and  hearing,  and 

9 13  R.  P.  C.  736-38,  17  L.  T.  (N.  S.)  that   it   is   possessed   of  a   sufficient 

298.   See  also  p.  635  for  case  in  court  amount   of   intelligence   to   note   the 

below.  difference    the    senses    convey.     The 

10 138  N.  Y.  244-52-1893;  33  N.  E.  court    ought    not    to    interfere    with 

1040.  the  freedom  of  conduct  of  trade  and 

11  Cited  in  Dunn  Co.  v.  Trix  Mfg.  with    general    business    competition. 

Co.,  50  App.  Div.  (N.  Y.)  75-1900;  Its  power  to  restrain  should  be  re- 

63  N.  Y.  Supp.  333;  Miinro  v.  Tousey,  served  to  prevent  fraud  and  imposture 

129  N.  Y.  38-4.3-1891;  29  N.  E.  9;  from   some   real   resemblance   in   the 

14  L.  R.  A.  245n.    "A  court  of  equity  name  and  appearance  of  the  pubhca- 

should  proceed  in  the  exercise  of  its  tions." 


584  Evidence 

also,  that  direct  comparison  of  the  articles  is  a  test  of  similarity. 
"The  eye,  at  a  glance,  takes  in  the  whole  of  one  exhibit  and  the 
whole  of  another;  and  the  comparison  thus  made  of  the  two  is 
the  surest,  and  the  only  satisfactory  way  of  satisfying  the  judg- 
ment as  to  the  existence  of  the  alleged  deceptive  imitation."  '^ 

"It  is  not  a  question  whether  the  defendant  has  in  all  respects 
imitated  the  trade-mark  of  the  complainant,  but  whether  he  has 
so  imitated  it  that  the  purchaser  has  been  imposed  on."  ^^^ 

This  was  formerly  quite  generally  regarded  as  the  rule.  Its 
fallacy  is  obvious,  however,  when  one  considers  how  seldom  in 
actual  purchase  of  goods  the  buyer  has  the  opportunity  of  plac- 
ing the  various  brands  of  competing  goods  side  by  side. 

§  323.  Similarity  Does  not  Mean  Exact  Likeness.  —  Sim- 
ilarity does  not  mean  exact  likeness  —  exact  facsimile  —  a  pre- 
cise copy.  If  the  court  decides  the  likeness  is  sufficiently  near 
to  cause  deception  of  the  ordinary  purchaser,  this  is  enough. 
It  need  not  be  such  an  imitation  that  the  two  cannot  be  dis- 
tinguished except  by  an  expert  or  upon  a  critical  examination 
by  a  person  who  knows  the  genuine  article  well.  It  is  sometimes 
even  sufficient  that  there  are  points  of  resemblance.  The  Su- 
preme Court  of  the  United  States  has  discussed  this  question  in 
McLean  v.  Fleming ^^ 

"Much  must  depend,  in  every  case,  upon  the  appearance  and 
special  characteristics  of  the  entire  device;  but  it  is  safe  to  de- 
clare, as  a  general  rule,  that  exact  similitude  is  not  required  to 
constitute  an  infringement,  or  to  entitle  the  complaining  party 
to  protection.  If  the  form,  marks,  contents,  words,  or  the  special 
arrangement  of  the  same,  or  the  general  appearance  of  the  al- 
leged infringer's  device,  is  such  as  would  be  likely  to  mislead  one 
in  the  ordinary  course  of  purchasing  the  goods,  and  induce  him  to 
suppose  that  he  was  purchasing  the  genuine  article,  then  the  simili- 
tude is  such  as  entitles  the  injured  party  to  equitable  protection" 
(id.  p.  253).  *  *  *  ''Difficulty  frequently  arises  in  determining 
the  question  of  infringement;  but  it  is  clear  that  exact  similarity 
is  not  required,  as  that  requirement  would  always  enable  the 
wrongdoer  to  evade  responsibility  for  his  wrongful  acts.  Color- 
able imitation,  which  requires  careful  inspection  to  distinguish 

>2  Lorillard  Co.   v.   Pe-per,  86  Fed.  ^^a  Enoch  Morgan  &  Sons  Co.   v. 

056-1898,   at  p.   958   (C.   C.   A.   8th      //unfeZe,  Fed.  Case  No.  4,493. 
Cir.).  »  96  U.  S.  245-55-1877;  24  L.  ed.  828. 


Care  Used  by  Average  Buyer  585 

the  spurious  trade-mark  from  the  genuine',  is  sufficient  to  main- 
tain the  issue;  but  a  court  of  equity  will  not  interfere  when  ordi- 
nary attention  by  the  purchaser  of  the  article  would  enable  him  at 
once  to  discriminate  the  one  from  the  other.  Where  the  similarity 
is  sufficient  to  convey  a  false  impression  to  the  public  mind,  and  is 
of  a  character  to  mislead  and  deceive  the  ordinary  purchaser  in 
the  exercise  of  ordinary  care  and  caution  in  such  matters,  it  is 
sufficient  to  give  the  injured  party  a  right  to  redress."  id.  p.  255. 

Here  again  is  seen  the  great  necessity  of  refraining  from  laying 
down  exact  rules  and  limits  to  be  enforced.  To  be  able  to  do  jus- 
tice in  all  cases,  the  court  must  be  governed  by  elastic  doctrines.  ^^" 

§  324.  Care  Used  by  Average  Buyer  of  the  Class  of  Article  in 
Question  Must  be  Considered.  —  Similarity  such  as  will  deceive 
the  critical,  well-posted  buyer  is  not  the  degree  of  likeness  neces- 
sary to  this  action.  It  is  the  buyer  who  uses  ordinary  caution 
in  making  his  purchase,  who  is  buying  with  the  care  usually  ex- 
ercised in  such  transactions,  who  must  be  deceived  by  this  simi- 
larity. He  who  buys  a  bottle  of  ale  does  not  use  as  much  care 
as  he  who  buys  a  watch.  He  who  buys  a  handkerchief  does  not 
usually  examine  the  goods  offered  him  as  carefully  as  he  who 
purchases  a  suit  of  clothes.^"* 

The  class  of  persons  who  customarily  purchase  an  article  must 
be  considered,  in  deciding  as  to  what  constitutes  similarity.  Two 
names  made  up  of  technical  words  may  be  entirely  distinct  to  the 
scholar's  eye  and  ear  and  yet  to  an  unlearned  person  they  appear 
identical.  ^^ 

130  Colman  v.  Crump,  70  N.  Y.  573-  "  Wirtz  v.  Eagle  Bottling  Co.,  50 
78-1877.  "It  is  not  necessary  that  N.  J.  Eq.  164-1892;  24  Atl.  658; 
the  symbol,  etc.  *  *  *  should  be  Fairbank  Co.  v.  Bell  Mfg.  Co.,  77  Fed. 
a  facsimile,  a  precise  copy,  of  the  869-1896;  De  Voe  Snuff  Co.  v.  Wolff, 
original  trade-mark,  or  so  close  an  206  Fed.  420-423.  "It  may  be  true 
imitation  that  the  two  cannot  be  dis-  that  the  cautious  and  discriminating 
tinguished  except  by  an  expert,  or  purchaser  is  not  likely  to  be  so  misled; 
upon  a  critical  examination  by  one  but  the  protection  accorded  to  a  trade- 
familiar  with  the  genuine  trade-mark,  mark  is  not  limited  to  the  cautious  and 
*  *  *  If  the  resemblance  is  calcu-  discriminating  customer,  but  em- 
lated  to  deceive  the  careless  and  un-  braces  the  'ordinary'  or  'unwary'  pur- 
wary;  and  thus  to  injure  the  sale  of  the  chaser  as  well." 

goods  of  the  proprietor  of  the  trade-  ^^  Fairhank   Co.   v.   Bell  Mfg.   Co., 

mark,   the  injured   party   is   entitled  77     Fed.    869-1896    (C.    C.    A.    2d 

to  relief."    See  also  Tallcot  v.  Moore,  Cir.), 
6  Hun  (N.  Y.)  106-1875., 


580  Evidence 

The  maker  of  goods,  in  choosing  a  name,  is  not  bound  to  in- 
sure the  negligent  buyer.  Neither  he  nor  his  competitor  has  a  legal 
right  to  the  enjoyment  of  the  trade  of  the  careless  or  heedless  or  of 
those  who  have  no  preference  as  to  which  brand  of  goods  they 
purchase.  The  law  of  unfair  trade  is  intended  to  protect  the 
average  buyer  of  the  particular  article  involved,  buying  under 
ordinary  conditions.  The  buyer  must  be  considered  as  he  exists. 
If,  in  buying  certain  kinds  of  goods,  the  average  purchaser  is 
heedless  and  careless  that  fact  should  be  fully  recognized. 

The  method  of  selling  the  goods,  and  the  ordinary  circum- 
stances attending  their  sale  must  be  kept  in  mind.  While  the 
court  is  not  bound  to  interfere,  where  ordinary  attention  will 
enable  the  purchasers  to  discriminate  between  the  trade  marks 
used  on  the  goods  manufactured  by  different  parties,  neverthe- 
less, the  character  of  the  article  as  well  as  the  use  to  which  it  is 
put,  the  kind  of  people  who  are  likely  to  ask  for  it,  and  the  manner 

in  which  it  is  probable  it  will  be  bought,  must  not  be  lost  sight 
of.  16 

§  325.  Character  of  the  Article,  and  the  Habits  and  Intelligence 
of  the  Consumer. —  The  court  will  consider  the  intelligence  which 
the  ordinary  purchasers,  buying  with  ordinary  caution,  will  use 
in  buying  the  article  involved. ^^  The  perceptions  of  the  ex- 
tremely stupid  or  extremely  brilliant  mind  are  not  to  be  con- 
sidered. The  law  presumes  that  the  purchaser  whom  it  must 
protect  en  masse,  is  a  man  of  ordinary  intelligence  and  sense,  and 
it  is  further  presumed  that  in  the  buying  he  will  use  the  degree  of 
care  ordinarily  and  customarily  used  in  buying  the  particular 
article  in  question  —  no  more,  no  less.  In  considering  whether 
or  not  one  device  is  similar  to  another,  it  is  extremely  important 
to  know  the  intellectual  capacity  of  the  purchasers  who  will  be 
called  on  to  distinguish  them.  Two  marks  each  composed  of  a 
device  made  of  two  elephants,  for  instance,  with  printed  matter, 
might  appear  entirely  different  to  one  who  could  read,  while,  to 

^'Popham  V.  Cole,  66  N.  Y.  69-  Wis.  401-1880;  7  N.  W.  252;  Eggers 

1876;  23  Am.  Rep.  22,  and  cases  there  v.  Hink,  03  Cal.  445-1883;  49  Am. 

cited;  Morgan's  Sons  Co.  v.  Troxell,  Rep.  96;  On  Ewing  &  Co.  v.  Johnston 

23  Hun,  632-1881;  reversed  in  89  N.  &  Co.,  L.  R.  13  Ch.  Div.  434-1880; 

Y.  292-1882;  42  Am.  Rep.  294;  Read  Apollinaris  Co.  v.  Scherer,  27  Fed.  18- 

Bros.  V.  Richardson  Co.,  45  L.  T.  N.  S.  1886  (C.  C.  S.  D.  N.  Y.). 
54-1881 ;  Beard  v.  Turner,  13  L.  T.  N.  "  McLean    v.    Fleming,    96    U.    S. 

S.  747-1866;  Leidersdorf  v.  Flint,  50  245-1877,  at  p.  251;  24  L.  ed.  828. 


Character  of  Article;  Habits,  etc.,  of  Consumer    587 

one  who  could  not  read,  they  might  seem  exactly  alike.  Differ- 
ences in  wrappers  for  a  college  man's  scarf  which,  to  college 
students,  would  be  entirely  adequate  to  distinguish  the  goods, 
might  be  utterly  inadequate  to  distinguish  two  different  brands 
of  calico  sold  to  the  natives  of  the  South  Sea  Islands  or  among  any 
ignorant  class  of  consumers. 

In  Johnston  &  Co.  v.  Orr  Ewing  &  Co.,^^  plaintiffs  had  been 
using  a  label,  the  main  feature  of  which  was  a  device  of  two  ele- 
phants. Defendant  colorably  reproduced  this  label.  The  plain- 
tiffs' mark  was  the  only  mark  using  the  figure  of  elephants  known 
in  the  Oriental  market,  where  plaintiffs  sold  their  goods;  and  it 
became  known  as  the  "two  elephants."  The  main  resemblance 
between  the  two  labels  was  the  fact  that  on  each  was  the  figure 
of  two  elephants.  Held,  the  label  of  the  defendant  might  easily 
mislead  the  natives.  Said  the  court:  ''To  such  persons,  or  at 
least  to  many  of  them  even  if  they  took  notice  of  the  differences 
between  the  two  labels,  it  might  probably  appear  that  these  were 
only  differences  of  ornamentation,  posture,  and  other  accessories, 
leaving  the  distinctive  and  characteristic  symbol  substantially 
unchanged."  No  actual  deceit  was  proved.  ''But  in  this  case, 
the  plaintiffs  judged  it  necessary  to  proceed  without  waiting  till 
actual  deceit  was  proved,  and  I  think  they  judged  rightly,  for  as 
James,  L.  J.,  said  (13  Ch.  Div.  464)  'the  very  life  of  a  trade-mark 
depends  upon  the  promptitude  with  which  it  is  vindicated'" 
(id.  pp.  229-30). 

"A  consumer  who  has  been  accustomed  to  purchase  an  article 
in  a  dress  or  package  which  has  become  familiar  to  him  does  not 
stop  to  read  and  examine.  Many  of  the  consumers  of  beer  are 
unable  to  read,  and  many  are  foreigners  and  unacquainted  with 
the  English  language.  All  consumers,  whether  able  to  read  or 
not,  are  in  fact  guided  by  the  general  appearance  of  the  packages 
or  label  which  is  before  them."^^ 

Plaintiffs  manufactured  French  polish  in  London,  and  de- 
veloped a  large  trade  in  Bombay,  where  the  goods,  from  the  two 
red  medals  on  the  label,  came  to  be  known  as  "Lai  Mohur"  or 
"Lai  Chap"  (meaning  "red  medal  or  stamp").  Defendants 
then  began  to  sell  their  polish  in  Bombay,  with  labels  differing 

18  L.  R.  7  App.  Cas.  219-25-1882.        1902  (C.  C.  A.  9th  Cir.).     So  also  Wil- 
18  Kostering   v.   Seattle   Brewing   &      kinson  v.  Griffith  Bros.  &  Co.,  8  Rep. 
Malting  Co.,  116  Fed.  620  at  page  621-      Pat.  Cas.  370. 


588  Evidence, 

from  plaintiffs';  except  that  they  bore  two  red  medals,  in  much 
the  same  position  as  plaintiffs'.  Held,  on  the  evidence,  that 
though  defendants'  label  might  not  deceive  the  British  public,  it 
tended  to  deceive  the  Bombay  public.     Injunction  was  granted. 

The  inexpensiveness  of  the  article,  and  the  fact  that  it  is  often 
called  for  by  careless  and  illiterate  persons,  or  foreigners,  un- 
familiar with  English,  will  be  taken  into  account.  The  bearing 
of  such  facts  is  aptly  expressed  by  Barrett,  J.,  in  Morgan^s  Sons 
Co.  v.  Troxcll,-^  as  follows:  "While  there  is  an  almost  ostenta- 
tious display  of  variation  in  matters  not  likely  to  attract  the 
attention  of  the  casual  purchaser,  there  is  a  substantial  similarity 
in  the  picture  to  which  the  eye  has  become  accustomed.  In  this 
connection,  we  must  not  lose  sight  of  the  character  of  the  article, 
the  use  to  which  it  is  put,  the  kind  of  people  who  ask  for  it,  and 
the  manner  in  which  it  is  ordered.  Very  broad  scene  painting 
will  deceive  an  ignorant,  thoughtless  or  credulous  domestic, 
looking  for  an  article  in  common  and  daily  use,  and  of  no  par- 
ticular interest  to  her  personally.  The  same  kind  of  deception 
would  be  instantly  detected  by  an  intelligent  woman  of  the 
world,  looking  for  her  favorite  perfume,  soap  or  dentrifice,  or  by 
a  man  of  luxurious  tastes,  inquiring  for  some  special  brand  of 
champagne." 

§  326.  Side  by  Side  Comparison  in  the  Court  Room  is  Not 
a  Proper  Final  Test  of  Similarity.  —  The  average  purchaser 
buying  by  mail  or  in  a  shop  has  no  chance  to  compare  the  plain- 
tiff's goods  with  the  defendant's.  If  he  has  one  article  before  him, 
the  best  he  can  do  is  to  compare  it  with  his  memory  of  the  other. 
For  this  reason  it  is  not  a  fair  test  of  the  resemblance  of  two 
articles  or  labels  or  names  to  compare  them  in  the  court  room 
solely  by  putting  them  side  by  side. 

''It  is  not  necessary  that  the  resemblance  should  be  such  as 
would  mislead  an  expert,  nor  such  as  would  not  be  easily  detected 
if  the  original  and  spurious  were  seen  together  (headnote)."  '^^" 

"Now  to  one  scanning  the  detailed  description  of  these  two 
Dutch  scenes,  or  laying  the  pictures  side  by  side,  there  could  be 
no  trouble  in  distinguishing  the  one  from  the  other.  Bui  this 
is  not  the  test."  ~^'' 

The  test  of  similarity  is  not  visual  comparison  but  memory 

20  23  Hun  (N.  Y.),  632-36-1881.  ^os  Heilcman  Co.  v.  Independent  Co., 

=""  Shaw  Co.  V.  Mack,  12  Fed.  707.      191  Fed.  489-97-1911. 


Side  by  Side  Comparison  Not  Final  Test  589 

comparison.  This  fact  is  often  overlooked  by  courts  in  unfair 
competition  cases.  It  has  actually  happened  in  more  than  one 
trial  of  these  cases  that  having  the  two  articles  before  him  the  pre- 
siding judge  has  actually  mistaken  the  one  for  the  other  and  yet 
has  felt  it  his  duty  to  go  on  taking  evidence  as  to  whether  they 
were  sufficiently  similar  as  to  cause  confusion,  forgetting  that 
if  they  were  sufficiently  similar  to  be  confused  when  side  by  side, 
on  his  bench  in  the  quiet  of  a  court  room,  it  was  practically  im- 
possible for  both  of  them  to  remain  on  the  market  without 
being  constantly  confused  in  the  hurry  and  bustle  of  everyday 
trading. 

It  is  the  tendency  to  carelessness  on  the  part  of  buyers  that 
makes  unfair  competition  profitable  and  possible  commercially. 
In  Stuart  v.  F.  G.  Stewart  Co.,-^  appellant  began  in  1891  to  make 
and  sell  "Stuart's  Dyspepsia  Tablets"  and  advertised  them 
widely.  Appellee  knew  of  complainant  and  his  business  when, 
in  1895,  he  put  on  the  market  "Dr.  Stewart's  Dyspepsia  Tablets" 
in  boxes  similar  to  appellants'.  Held,  "Comparison  *  *  * 
is  not  the  test  of  infringement.  The  purchaser  has  not  the  ad- 
vantage of  comparison.  A  specific  article  of  approved  excel- 
lence comes  to  be  known  by  certain  catchwords  easily  retained 
in  memory,  or  by  a  certain  picture  which  the  eye  readily 
recognizes.  The  purchaser  *  *  *  jg  ^q^  bound  to  study  or 
reflect.  He  acts  upon  the  moment.  He  is  without  the  oppor- 
tunity of  comparison.  It  is  only  when  the  difference  is  so  gross 
that  no  sensible  man  acting  on  the  instant  would  be  deceived 
that  it  can  be  said  that  the  purchaser  ought  not  to  be  protected 
from  imposition.  Indeed,  some  cases  have  gone  to  the  length 
of  declaring  that  the  purchaser  has  a  right  to  be  careless.  *  *  * 
However  that  may  be,  the  imitation  need  only  be  slight,  if  it 
attaches  to  what  is  most  salient.  ^^'^  Here  the  purchaser,  de- 
siring the  remedy  of  the  appellant,  to  which  his  attention  had 
been  attracted  by  the  advertisement,  or  which  possibly  he  had 
before  purchased,  knew  the  remedy  as  'Stuart's  Dypepsia  Tab- 
lets,' and  that  it  was  in  a  blue  wrapper.  The  name  caught  the 
ear;  the  color  caught  the  eye.  *  *  *  Wg  think  it  would 
require  more  than  the  care  ordinarily  used     *     *     *     to  expect 

"91  Fed.  243-45-1899  (C.  C.  A.  -'"  Pillshury  v.  Flour  Mills  Co.,  24 

7th  Cir.).  U.  S.  App.  395,   407;    64  Fed.  841, 

847. 


590  Evidence 

that  *  *  *  a  purchaser  would  ddiberate  over,  or  be  warned 
by,  the  addition  of  the  prefix  'Dr.'"  (id.,  pp.  245-46).22 

§  327.  Evidence  that  the  Proportion  of  Buyers  of  any  Article 
Likely  to  be  Deceived  by  Defendant's  Acts  is  Small,  is  Not 
a  Defense.  —  The  court  will  enjoin  a  defendant  even  though  it 
appears  that  his  acts  in  all  Hkelihood  will  not  deceive  more  than 
a  small  percentage  of  his  customers.  Such  evidence  may  be  com- 
petent on  the  question  of  damages.  It  is  not  important  if  com- 
petent on  question  of  the  right  of  plaintiff  to  an  inj unction. ^^^ 

§  328.  Imitation  of  Salient  Features.  —  Imitations  may  be 
slight  and  still  constitute  "similarity,"  if  they  attach  to  salient 
features.  Many  articles  come  to  be  known  by  a  peculiarity  they 
possess,  which  is  usually  described  by  a  catchword.  The  im- 
portant question  is,  What  part  of  the  label  or  name  will  the 
buyer  look  at?  What  will  he  actually  take  in,  actually  see,  when 
he  buys  under  ordinary  conditions?  It  is  a  physical  fact  that  the 
average  person  will  not,  can  not,  take  in  at  a  casual  glance  all, 
or  even  a  large  part,  of  the  detail  of  what  he  looks  at.^'^  The  ques- 
tion is  what  part  of  the  names  or  marks,  which  are  alleged  to  be 
similar,  does  the  average  ordinary  buyer  see  when  he  looks 
at  them;  what  feature  of  a  label  or  container  becomes  familiar 
to  the  average  buyer  of  the  article.  We  do  not  hear  all  that  is 
spoken  in  our  hearing,  only  a  part  is  noticed  by  us,  with  sufficient 
detail  for  us  to  retain  an  impression  of  it  which  we  will  recall  when 
we  hear  it  again.  Few  people  would  be  struck  with  the  difference 
between  the  names  "Stuart's  Dyspepsia  Tablets"  and  "Dr.  Stew- 
art's Dyspepsia  Tablets,"  and  yet  one  word  in  four  is  difTerent. 

"  Meyer  v.  Dr.  Bull  Vegetable  Medi-  fraud,  of  deceit,  or  likelihood  of  con- 

cine  Co.,  58  Fed.  884-1893  (C.  C.  A.  fusion  between  plaintiff  and  defendant 

7th    Cir.).      Plaintiffs    sold    "Bull's  has  been  discovered  in  the  books  which 

Cough    Syrup,"     and     "Dr.     Bull's  will  fit  all  cases,  and  it  is  well  that 

Cough   Syrup."     Defendant  sold   in  this  is  so,  for  were  there  such  rules 

similar  wrappers,  "Dr.  B.  L.  Bull's  to  be  found,  equity  would  sometimes 

Celebrated  Cough  Syrup."    This  was  be  found  to  have  so  bound  herself 

enjoined.     "Bull's  Cough  Syrup"  is,  by  this  same  rule  as  to  be  unable  to 

in    one    sense,    quite    different    from  render  aid  in  some  future  case  of  real 

"Dr.  B.  L.  Bull's  Celebrated  Cough  injustice. 

Syrup,"  but  the  use  of  the  latter  was  •-'^  Rushmore  v.  Badger  Brass  Co., 

enjoined  not  because  of  the  likeness  198  Fed.  379. 

between  them,  but  to  protect  the  pur-  "  Blackwcll  v.  Crabh,  36  L.  J.  Ch. 

chaser,  who  has  no  chance  for  accurate  N.  S.  504-1867. 
comparison.     No  rule  of  measure  of 


Physical  Requirements  Must  be  Considered       591 

The  average  buyer  seeks  a  sign,  some  special  earmark  of  the 
brand  he  has  in  mind.  It  may  be  color  —  or  a  design  —  or  a 
peculiar  shape  or  name.  Once  his  eye  sees  that  or  his  ear  hears 
it,  he  is  satisfied.  He  is  careless  —  yes,  possibly,  but  if  that  is 
the  way  the  average  man  buys  that  sort  of  goods,  he  may  right- 
fully demand  that  the  law  protect  him  from  deceit  when  he  so 
purchases.  There  have  been  cases  which  have  held  that  a  buyer 
has  a  right  to  be  careless.  He  certainly  has  a  right  to  be  careless 
where  the  article  involved  is  sold  at  a  very  low  price  and  is  habit- 
ually bought  by  all  with  httle  or  no  inspection. 

§  329.  Necessary  Physical  Requirements  of  the  Article  Must 
be  Considered.  —  Sometimes  several  articles  differing  in  many 
ways  are  made  by  various  manufacturers  in  the  attempt  to 
serve  a  specific  purpose,  the  physical  limitations  of  which  compel 
all  the  makers  to  construct  their  goods  in  certain  respects  in  a 
very  similar  manner.  In  the  absence  of  patent  rights,  no  one 
can  monopolize  the  mechanical  elements  necessary  to  this  con- 
struction and  no  one  can  appropriate  exclusively  to  himself  a 
name  which  is  based  on  a  description  of  these  common  physical 
limitations.  In  other  words,  no  principles  of  construction  or 
names  descriptive  of  them  which  are  essential  to  a  successful 
practical  operation  of  a  device  and  serve  to  promote  its  efficiency, 
may  be  appropriated,  and  proof  of  similarity  in  these  particulars 
is  not  usually  evidence  of  unfair  competition.  ^^ 

The  limitations  of  the  right  of  one  person  to  imitate  an  article 
manufactured  by  another  are  shown  in  Enterprise  Mfg.  Co.  v. 
Landers,  Frary  &  Clark.^^  There  not  only  had  the  defendants 
conformed  their  goods  to  complainant's  in  size  and  general  shape, 
but  also  reproduced  in  all  minor  details  every  line  and  curve; 
superfluous  metal  was  put  into  the  driving  wheels,  giving  a  very 
characteristically  similar  effect.  The  goods  were  then  dressed 
with  combinations  of  color  and  decorations  exactly  copied  or 
closely  simulated  as  to  style  of  letters  and  details  of  ornament, 
except  that  on  one  mill  was  found  the  complainant's  name  and  on 
the  other  the  defendant's. 

This  was  held  to  be  "a  most  aggravated  case  of  unfair  trading," 
and  that  such  reproduction  of  unnecessary  lines  and  curves  and 
simulations  of  arbitrary  designs  and  striking  combinations  of 

2<  Marvel   Co.   v.   Pearl,    133   Fed.  «  131  Fed.  240-1904  (C.  C.  A.  2d 

160-1901  (C.  C.  A.  2d  Cir.).  Cir.),  at  p.  241. 


592  Evidence 

color  would  be  restrained  by  a  court  of  equity  when  they  were 
so  close  as  to  show  an  intent  to  appropriate  the  trade  of  a  com- 
petitor.-^" 

§  330.  Distance  Between  Competitors  a  Factor  in  Deciding 
as  to  Similarity.  —  It  has  been  stated  that,  in  considering  the 
question  of  unfair  competition,  the  geographical  situation  of  the 
person  who  will  buy  the  goods  in  question  is  to  be  considered. 
This  is  true,  but  not  unqualifiedly  so.  Formerly,  it  would  have 
been  assumed  in  the  absence  of  most  positive  proof  that  a  party 
might  carry  on  his  own  business  under  his  own  name  in  Chicago, 
notwithstanding  the  fact  that  parties  had  established  business 
under  the  same  name  in  New  York.  Ball  v.  Best,^^  held  that  a 
Chicago  house  should  be  enjoined  because  both  did  a  mail  order 
business,  by  reason  of  which  a  New  York  house  was  confused 
with  it,  by  buyers  at  points  far  distant  from  both  Chicago  and 
New  York,  and  an  injunction  was  issued.  In  Randall  v.  British 
ct*  American  Shoe  Co.,-''  it  was  held,  that  although  plaintiff's  shop 
was  five  miles  from  defendant's  in  London  there  was  unfair  com- 
petition from  similarity  of  name. 

The  effect  of  imitation  depends  very  much  upon  propinquity. 
In  many  cases  the  use  of  a  similar  trade-mark,  in  localities  very 
remote  from  each  other,  would  not  justify  an  inference  that  the 
establishments  were  those  of  a  common  proprietor,  and  so  would 
not  result  in  damage  or  support  an  allegation  of  fraud,  while 
if  they  were  near  each  other  such  an  inference  would  be  legitimate 
and  necessary. 2^ 

25"  Marvel  Co.  v.  Pearl,  133  Fed.  160;  eight  other  shops  bearing  this  name, 

sec  also  Rushmore  v.  Saxon,  170  Fed.  Defendants   organized   the   "London 

1021-1909,  C.  C.  A.  2d  cir.,  June,  1909,  American  Shoe  Company"   and,   on 

mod.  and  aff.,  158  Fed.  499.  objection   of   the   plaintiff,   took   the 

2"  135     Fed.      434-1905      (C.     C.  name  "The  British  &  American  Shoe 

III.).  CompanJ^"     Phiintiffs  were  the  first 

"  [1902]  2  Ch.  354:  19  R.  P.  C.  393.  to  open  shops  that  sold  only  American 

In  1897,  plaintiffs  opened  shop  in  Re-  shoes.     They  spent  £5,000  in  adver- 

gent  street  exclusively  for  the  sale  of  tising  this  business.    Defendants'  shop 

American     shoes     under     the    name  was  five  miles  from  nearest  shop  of 

"American  Shoe  Company."     Plain-  plaintiff.     Actual  deceit  was  shown, 

tiffs,  a  limited  company,  dealt  largely  Held,  that  both  names  used  by  de- 

in  English  shoes.    They  adopted  the  fendants  were  calculated  to  deceive, 
name  "American  Shoe  Company"  to         -^  Cody  v.  Schultz,   19  R.  L   193- 

distinguish  that  business  from   their  1895;    32    Atl.    915;    29    L.     R.    A. 

English  business.    They  later  opened  524. 


Deceit  of  Ultimate  Purchaser,  not  of  Middleman    593 

§  331.  Deceit  of  Ultimate  Purchaser,  Not  of  Middleman,  is 
the  Important  Consideration.  —  As  has  been  seen,  it  is  not 
necessary  to  support  an  action  for  unfair  competition  that  the 
vendor  of  goods  should  do  the  deceiving.  It  is  enough  if  he  put 
it  in  the  power  of  anyone  else,  middleman  or  retailer,  to  deceive 
the  ultimate  purchaser.  Hence  the  degree  of  identity  and  imita- 
tion which  must  be  considered  is  not  that  which  would  deceive 
the  jobber  or  immediate  purchaser  but  the  consumer  of  the  goods. 
"In  the  sharp  contest  between  the  individual  manufacturer, 
who  strives  to  acquire  and  retain  the  fruits  of  industry  and 
honesty,  and  the  field  of  keen  rivals,  seeking  to  wrest  from  him 
the  prize  of  the  public  good-will,  the  inventive  ingenuity  of  the 
infringer  has  conceived  a  great  variety  of  devices  for  evading 
the  established  rules  of  fair  dealing.  Among  the  later  of  these 
devices  are  acts  professedly  within  legal  limitations,  but  mani- 
festly designed  to  be  afterward  so  made  available  by  other  acts 
as  to  deceive  the  public.  In  such  cases  courts  of  equity,  looking 
beyond  the  original  acts,  and  finding  that  their  ultimate  object 
and  effect  were  to  enable  and  induce  the  retail  seller  of  a  fraudu- 
lent imitation  to  palm  it  off  on  an  unsuspecting  public  for  the 
genuine  article,  and  thus  to  contribute  to  the  infringement  upon 
the  rights  of  the  original  owner,  have  not  hesitated  to  apply  the 
remedy."  ^^ 

To  entitle  plaintiff  to  relief  it  is  not  necessary  to  prove  that 
any  customer  of  plaintiff  has  been  deceived  by  anything  done  by 
defendant,  it  being  sufficient  to  show  that  defendant  knowingly 
puts  it  in  the  power  of  retail  dealers  to  deceive  their  customers. ^° 
The  defendant  may  have  sold  the  goods  to  one  who  has  in  turn 
sold  the  goods  to  other  jobbers.  The  question  is,  Were  the 
goods  an  imitation  of  those  of  a  rival,  when  they  left  defendant's 
hands?  Although  all  the  jobbers  know  whose  make  of  goods 
they  are,  yet  if  the  retailer  is  able,  by  reason  of  their  get-up, 
to  use  them  fraudulently,  the  maker  may  be  held  liable  to  one 
who  suffers  loss  from  the  retailer's  unfair  trading.^^ 

Ambiguity  in  a  name,  or  the  fact  that,  while  similar  to  that 

29  Hosteller  Co.  v.  Sommers,  84  Fed.  "  New  England  Aivl  &  Needle  Co. 

333-35-1897  (C.  C.  S.  D.  N.  Y.).  v.   Marlborough  Awl   &   Needle  Co., 

^"Williamson  Corset   &   Brace  Co.  168     Mass.     154-1897;    46     N.     E. 

V.  Western  Corset  Co.,  70  Mo.  App.  386. 
424-1897. 


594  Evidence 

of  the  plaintiff,  it  is  so  different  that  some  people  construe  it  one 
way  and  some  another,  will  not  prevent  injunction  from  being 
issued  against  it.  It  may  still  be  held  similar  within  this  rule. 
It  is  not  necessarily  important  that  it  has  been  understood  differ- 
ently by  different  persons.     That  does  not  prove  dissimilarity.^^ 

§  332.  Similarity  of  Color,  Shape,  Size,  etc.  — \  Generally  speak- 
ing, a  trader  will  not  be  entitled,  even  after  long  and  exclusive 
use,  to  monopolize  a  particular  color  or  a  particular  shape,  size, 
or  style  for  the  label  or  wrapper  of  a  particular  class  of  goods. 
The  trend  of  the  law  is  strongly  toward  the  proposition  that 
under  ordinary  circumstances  the  adoption  of  packages  of  pe- 
culiar form  and  color  alone,  unaccompanied  by  any  distinguish- 
ing symbol,  sign,  or  seal,  is  not  sufficient  to  constitute  a  trade- 
mark.^^ This  general  rule  has  been  applied  in  a  variety  of  ways. 
Hi  Fleischmann  v.  Starkey,^'^  for  example,  it  was  held  that  no  ex- 
clusive right  could  be  acquired  to  use  a  yellow-colored  label  for 
packages  of  yeast.  Nor  can  there  be  an  exclusive  right  in  the 
nature  of  a  trade-mark,  to  the  use  of  a  barrel  of  peculiar  form  and 
dimensions,  irrespective  of  any  marks  or  devices  stamped  upon 
or  connected  with  it.^^  In  Brown  v.  Seidel,^^  defendant  closely 
imitated  plaintiffs'  package  in  the  size,  form,  wrappings,  and 
color,  but  in  the  words  and  arrangement  of  the  labels,  the  differ- 
ence was  marked.  Plaintiffs  were  held  (one  judge  dissenting) 
not  to  be  entitled  to  an  injunction.  The  court  quoted  the  lan- 
guage of  Heinz  v.  Lutz,^'^  to  the  effect  that  "the  offending  label 
must  be  such  that  it  is  likely  to  deceive  persons  of  ordinary  in- 
telligence." And  the  court  doubts  whether  "the  mere  resem- 
blance, accidental  or  otherwise,  in  the  size  and  style  of  putting 
up  packages,  is  of  itself  sufficient  to  justify  the  interference  of  a 
court  of  equity." 

It  does  not  follow,  however,  that  while  the  imitation  of  a  par- 
ticular feature,  such  as  color  or  shape,  would  not,  if  standing 
alone,  be  restrained,  yet,  if  there  is  imitation  in  several  such 
features  producing  misleading  likeness  of  general  appearance,  an 

"  Singer  Mfg.  Co.  v.  Loog,  8  L.  R.  "  Moorman  v.  Hoge,  2  Sawy.  78- 

App.  Cas.  15-18-1882.  1871  (C.  C.  Cal.). 

^i  Philadelphia  Novelty  Mfg.  Co.  v.  3«  153  Pa.  St.  60-72-1893;  25  Atl. 

Rouss,  40    Fed.  585-1889  (C.  C.  S.  1064. 

D.  N.  Y.).  "146    Pa.    St.    592-608-1891;    23 

"25  Fed.  127-1885  (C.  C.  R.  I.).  Atl.  314. 


Similarity  of  Names 


595 


injunction  will  not  be  issued  expressly  against  the  use  of  a  par- 
ticular feature,  such  as  color,  and  also  generally  against  the  use 
of  all  the  features  in  combination.  In  Sterling  Remedy  Co.  v. 
SperiJiine  Medical  Co.,^^  there  was  a  clear  and  deliberate  imitation 
of  the  peculiar  and  unusual  shape  and  color  of  labels  and  style  of 
box  adopted  by  the  complainant,  as  well  as  of  letter  press  and  of 
the  name  applied  to  the  goods.  Held,  that  there  should  be  an 
injunction  against  the  form  of  tablet  and  shape  of  box  as  well  as 
against  the  use  of  infringing  names.  So  also  Franck  v.  Frank 
Chicory  Co.,^^  the  use  of  a  particular  label  was  specifically  pro- 
hibited, where  there  had  been  imitation  in  other  respects  also. 
The  court  in  such  cases  is  not  bound  to  Imiit  its  injunction  to  the 
combined  use  of  all  the  features  of  imitation. 

§  333.  Similarity  of  Names.  —  The  cases  given  in  the  note  below 
are  rulings  of  various  courts  on  what  are  and  are  not  similar 
names.  The  foregoing  rules  apply  in  general,  but  in  the  last 
analysis,  local  conditions,  the  peculiar  facts  of  each  case  and 
other  evidences  of  fraud  in  addition  to  the  similarity  of  the  names, 
are  all  considered  by  the  court. ^° 


3«112  Fed.  1000-1901  (C.  C.  A. 
7th  Cir.). 

39  95 Fed.818-1899 (C.C.E.  D.  Wis.). 

*°  Civil  Service  Supply  Association 
V.  Dean,  L.  R.  13  Ch.  Div.  512-1879. 
Plaintiffs  had  a  store  in  Queen  Vic- 
toria street.  In  1877,  they  opened 
a  store  for  boots  and  shoes  at  Bed- 
ford, with  an  entrance  on  Tavi- 
stock street.  Defendant  was  a  boot- 
maker having  a  shop  on  Bedford 
street  with  an  entrance  also  on  the 
Strand.  In  1877,  defendant  placed 
upon  his  shop  a  sign  bearing  the 
words  "Civil  Service  Boot  Supply" 
and  in  his  window  a  card  with  the 
words  "Civil  Service"  in  large  let- 
ters. It  was  admitted  on  the  trial 
that  the  words  "Civil  Service"  were 
used  by  many  other  shops  in  London. 
The  court  held  that  it  was  not  shown 
that  the  shop  of  defendant  had  been 
represented  to  any  of  the  witnesses 
as  that  of  the  plaintiffs;   that,  inas- 


much as  the  plaintiffs  had  never  sold 
boots  or  shoes  until  1877,  there  could 
be  no  impropriety  in  defendant  put- 
ting up  the  signs  he  did.  No  per- 
son desiring  to  get  into  the  Tavistock 
street  shop  could  have  been  misled 
when  he  went  into  a  shop  opening 
in  the  Strand.  These  rules  of  trade 
are  made  for  the  general  public  and 
not  for  those  who  are  wilhng  to  be 
misled  and  to  believe  that  when  they 
are  going  in  one  street  they  are  go- 
ing in  another.  Goodwin  v.  Ivory 
Soap  Co.,  18  R.  P.  C.  389-92-1901; 
not  trade-mai'k  case.  Goodwin  began 
to  sell  Ivy  soap  in  1889,  and  in  1899 
began  action  to  restrain  defendants 
from  selling  Ivory  soap  in  England. 
It  was  admitted  Ivory  soap  had  been 
sold  in  England  prior  to  1889.  Held, 
the  two  soaps  were  put  up  in  an  en- 
tirely different  manner,  so  no  mistake 
could  result.  The  only  ground  plain- 
tiff has  for  recovery  is  similarity  of 


/ 


596 


Evidence 


§  334.  Evidence    to    Prove    Secondary   Meaning.  —  Second- 
ary  meaning   cannot   be   proved   on    the   same  evidence   that 


name  and  the  consequent  liability  of 
resulting  clecei)tion.  Held,  on  appeal, 
that  "Simply  because  the  word  'Ivy' 
may  have  some  sort  of  similar  sound 
to  the  word  'Ivory,'  if  you  do  not  pro- 
nounce the  word  'Ivy'  properly,  the 
plaintiff  asks  the  court  to  assume  as 
the  inevitable  deduction  that  what  the 
defendants  are  doing  must  be  calcu- 
lated to  deceive.  It  is  impossible  to 
my  mind  to  make  any  such  deduc- 
tion from  the  facts."  Cooper  &  Mc- 
Lcod  V.  Maclachlan,  19  R.  P.  C. 
27-1901.  After  1875,  plaintiffs  used 
with  their  firm  name  the  words  "Cas- 
tle Brewery."  They  were  located 
in  Edinburgh.  In  1872,  defendants 
opened  a  brewery  at  Govan,  which 
plant  they  called  "Castle  Vaults." 
In  1900,  they  opened  a  brewery  near 
Edinburgh  which  they  called  "Castle 
Brewery."  The  defendant  had  had  a 
"Castle  Brewery"  at  Glasgow  since 
1888  and  had  used  the  name  "Castle 
Beer."  No  proof  of  deceit  —  injunc- 
tion refused.  Upheld  on  appeal.  Lee 
V.  Haley,  L.  R.  5  Ch.  App.  Cas.  155- 
1869.  The  plaintiffs  had,  for  a  series 
of  years,  carried  on  business  as  coal 
dealers  in  Pall  Mall,  London,  under 
the  name  of  the  "Guinea  Coal  Com- 
pany." The  defendant,  who  had  been 
their  manager,  finally  set  up  a  business 
in  the  same  street  under  the  same  style 
of  "The  Pall  Mall  Guinea  Coal  Com- 
pany," and,  while  it  appeared  that 
there  were  other  Guinea  Coal  Com- 
panies in  London  so  that  the  plain- 
tiffs did  not  have  the  exclusive  right 
to  the  use  of  the  trade-mark  "Guinea 
Coal  Company,"  yet  the  court  held 
that  they  were  entitled,  as  against  the 
defendant,  to  be  protcclcd  in  the  use 
of  the  name.    "But  tlie  principle  upon 


which  the  cases  on  this  subject  pro- 
ceed is,  not  that  there  is  property 
in  the  word,  but  that  it  is  a  fraud  on  a 
person  who  has  established  a  trade, 
and  carries  it  on  under  a  given  name, 
that  some  other  person  should  assume 
the  same  name,  or  the  same  name  with 
a  slight  alteration,  in  such  a  way  as  to 
induce  persons  to  deal  with  him  in  the 
belief  that  they  are  dealing  with  the 
person  who  has  given  a  reputation  to 
the  name"  (id.  p.  161).  This  case 
goes  further  than  it  is  necessary  to 
carry  the  rule  in  the  foregoing  case, 
because  the  words  "Pall  Mall  Guinea 
Coal  Company"  could  be  truthfully 
used  by  both  parties.  Both  sold  the 
coal  in  Pall  Mall  for  a  guinea  a  ton. 
Army  &  Navy  Co-operative  Society 
V.  Army,  Navy  &  Civil  Service  Co- 
operative Society  of  South  Africa, 
Ltd.,  19  R.  P.  C.  574-76-1902.  Plain- 
tiff had  been  incorporated  for  thirty 
years.  Held,  on  hearing  for  interlocu- 
tory injunction  that  the  name  was  cal- 
culated to  deceive.  "The  plaintiffs 
have  no  right  to  the  words  'Army  and 
Navy'  or  any  combination  of  those 
words.  Their  right  lies  in  this,  that 
they  may  sue  if  a  defendant  is  fraud- 
ulently adoi)ting  a  name  for  the  pur- 
pose of  pretending  that  his  trade  is 
their  trade,  and  if  he  be  not  fraudu- 
lent at  all,  still  the  plaintiffs  may  sue 
'in  property,'  if  he  is  adopting  a 
name  the  result  of  which  will  be  that 
the  defendant  will  be  taking  the 
plaintiffs'  property  in  the  sense  that 
persons  will  go  to  the  defendant  to 
trade  with  him  when  they  meant  to 
go  to  the  plaintiffs,  meaning  to  trade 
,  with  them."  Choynski  v.  Cohen,  39 
>fCal.  501-1870.  Plaintiff  had  for  some 
years   conducted  a   bookstore  called 


Evidence  to  Prove  Secondary  Meaning 


597 


suffices  in  cases  where   the  mark  is  purely  fanciful.      In  sec- 
ondary meaning  cases,  the  mere  proof  by  the  plaintiff  that  the 


the  "Antiquarian  Book  Store."  This 
name  was  placed  on  the  sign  and 
uniformly  used  in  advertising  and  in 
all  transactions.  He  now  sought  to 
enjoin  defendant  from  conducting  a 
rival  store  under  the  name  of  the 
"Antiquarian  Book  &  Variety  Store." 
Held,  that  plaintiff  could  claim  no 
)C  exclusive  right  to  use  the  word  "Anti- 
quarian" as  part  of  his  trade-mark  or 
trade  name,  and  that  he  was  entitled  to 
no  relief.  Weinstock,  Lubin  &  Co.  v. 
Marks,  109  Cal.  529-1895;  42  Pac. 
142;  30  L.  R.  A.  182.  Plaintiffs,  in 
1874  opened  the  "Mechanics'  Store." 
Defendant,  in  1887  opened  the  "Me- 
chanical Store."  "As  we  view  the 
picture  presented  by  the  findings  lof 
fact,  the  question  as  to  what  may  or 
may  not  be  the  subject  of  a  trade- 
mark is  not  the  problem  to  be  solved. 
That  these  words  are  of  a  kind  that 
may  be  used  as  a  trade  name  we  have 
no  doubt,  and  having  established 
that  fact  we  are  required  to  pur- 
sue the  investigation  no  further. 
That  certain  names  and  designa- 
tions which  may  not  become  tech- 
nical or  specific  trade-marks  may  be- 
come the  names  of  articles  or  of  places 
of  business,  and  thereby  the  use 
thereof  receive  the  protection  of  the 
law,  cannot  be  doubted,  for  the  cases 
everywhere  recognize  that  fact"  (id. 
pp.  535-36).  "*  *  *  And  that  the 
^words  'Mechanics'  Store'  may  be 
made  a  trade  name,  and  the  user 
thereof  become  entitled  under  the  law 
to  protection  from  pirates  preying 
upon  the  sea  of  commercial  trade, 
we  have  no  doubt.  We  think  the 
defendant  should  be  restrained  from 
the  use  of  the  words  'Mechanical 
Store.'  The  court  has  declared  the 
fact  to  be,  and  it  is  not  challenged  by 


^ 


defendant,  that  these  words  were 
used  as  a  designation  of  his  store  for 
the  purpose  of  deceiving  the  public, 
and  especially  plaintiff's  customers, 
and  thereby  securing  the  advantages 
and  benefits  of  the  good-will  of  plain- 
tiff's business.  To  say  that  such 
conduct  on  the  part  of  defendant  is 
unfair  business  competition  is  to  state 
the  facts  in  the  mildest  terms"  (id. 
p.  537).  Bolander  v.  Peterson,  136 
111.  215-1891;  26  N.  E.  603;  11  L.  R. 
A.  350.  Complainant,  a  dealer  in 
snuffs  in  Chicago,  had  for  some  time 
designated  his  store  and  business  as 
"Svenska  Snusmagasinet "  (Swedish 
Snuff  Store);  his  store  was  advertised 
and  well-known  among  Swedes  bj* 
that  name.  Defendant  was  also  a 
dealer  in  snuffs  on  the  same  street, 
not  far  from  complainant,  and  had 
been  using  the  sign  "C.  W.  Peterson, 
Nya  Snus  Fabrik."  He  now  altered 
this  to  "C.  W.  Peterson,  Svenska 
Snus  Magasin,"  and  advertised  the 
store  and  business  as  "Fran  Snus- 
magasinet." The  snuffs  were  sold 
under  different  brands.  Held,  that 
complainant  was  not  entitled  to  re- 
strain him  from  so  doing.  Mossier 
V.  Jacobs,  66  111.  App.  571-1896. 
Complainants  alleged  that  they  had 
been  engaged  in  business  for  fifteen 
years  under  the  style  of  "Six  Little 
Tailors,"  and  that  the  defendant  had 
opened  a  tailoring  establishment  un- 
der the  name  of  "Six  Big  Tailors." 
Held,  that  the  name  was  so  similar  to 
complainant's  trade  name  that  it  was 
calculated  to  deceive  the  unwary,  and 
that  its  use  would  be  enjoined.  In- 
surance Oil  Tank  Co.  v.  Scott,  33  La. 
Ann.  946-1881.  Plaintiff  had  an 
illuminating  oil  specially  masiufac- 
tured  for  it  and  described  it  as  "In- 


/ 


598 


Evidence 


defendant  is  using  a  name,  word  or  device,  which  he  had  adopted  to 
distinguish  his  goods,  does  not  entitle  him  to  any  rehef.     He 


suranco  Oil,"  claiming  it  excelled  in 
its  combination  of  safety  with  other 
qualities.  Defendants  afterward  put 
on  the  market  oil  in  packages  branded 
"Insurance  Oil"  in  type  exactly  like 
that  used  by  jilaintiff.  Held,  that 
plaintiff  was  entitled  to  the  exclusive 
use  of  the  words  "Insurance  Oil." 
Giragosian  v.  Chutjian,  194  Mass.  504- 
1907;  80  N.  E.  647.  Plaintiff,  in  1900 
began  business  under  the  trade  name 
"Oriental  Process  Rug  Renovating 
Company."  About  the  same  time, 
and  before  this  name  had  become 
identified  with  plaintiff  in  public 
reputation,  defendant  in  good  faith 
went  into  business  under  the  name 
"Oriental  Rug  &  Carpet  Renovating 
Works."  In  advertising,  he  generally 
prefixed  the  name  "Chutjian  Broth- 
ers" to  these  words.  Neither  party 
used  any  process  peculiar  to  him- 
self. Held,  that  the  defendant  was 
entitled  to  use  the  trade  name  adopted 
by  him  \vith  or  without  the  proper 
name  prefixed  in  spite  of  its  resem- 
blance to  plaintiff's.  But  he  should 
not  alter  the  name  to  "Oriental  Car- 
pet and  Rug  Renovating  Works"  so 
as  to  appear  first  in  the  telephone 
directory.  Samuels  v.  Spitzer,  177 
Mass.  22G-1900;  58  N.  E.  693.  A  bill 
in  equity  alleged  that  plaintiff  had 
developed  by  advertisement  and  other- 
wise a  large  business  as  a  clothier  in 
Rhode  Island  and  southeastern  Mas- 
sachusetts under  the  name  of  the 
"Manufacturers'  Outlet  Company," 
and  that  the  name  had  been  copy- 
righted or  registered  as  a  trade-mark. 
It  furtlicr  alleged  that  defendant, 
fraudulently  seeking  to  mislead  the 
public  to  his  own  advantage,  had 
established  in   a   neighborhood   from 


which  a  considerable  part  of  plaintiff's 
trade  was  drawn  a  shop  for  the  sale  of 
goods  similar  to  plaintiff's  under  the 
name  "Tauntcm  Outlet  Company," 
and  was  thereby  deceiving  the  public 
and  diverting  trade  from  ])laintiff.  On 
demurrer,  the  bill  was  held  to  state  a 
cause  of  action  for  unfair  competition. 
Miskell  v.  Prokop,  58  Nebr.  628-1899; 
79  N.  W.  552.  Plaintiff  had  for  some 
years  kept  a  store  bearing  the  sign 
"Racket  Store,"  and  generally  known 
by  that  name.  Defendant  then 
opened  a  store  in  the  immediate 
neighborhood  under  the  sign  and  name 
"New  York  Racket  Store,"  the  words 
"New  York"  being  printed  in  small 
letters.  It  appeared  that  the  word 
"Racket"  had  been  quite  often  used 
as  descriptive  of  certain  kinds  of 
stores  before  plaintiff's  adoption  of 
the  term.  The  court  below  having 
determined  that  there  was,  under  the 
circumstances,  no  such  simulation  as 
amounted  to  unfair  competition,  Jield, 
that  its  finding  would  not  be  dis- 
turbed on  appeal.  Brooklyn  White 
Lead  Co.  v.  Masury,  25  Barb.  (N.  Y.) 
416-1857.  Plaintiffs  had  for  more 
than  twenty  years  manufactured  white 
lead  at  Brooklyn,  stamping  the  kegs 
with  their  corporate  name.  Defend- 
ant subsequently  began  to  manufac- 
ture white  lead  at  Brooklyn,  and  at 
first  marked  his  kegs  "Brooklyn 
White  Lead."  Later  he  began  to 
make  zinc  paint  also,  and  changed  the 
mark  on  his  goods  to  "Brooklj'n 
White  Lead  &  Zinc  Company." 
Held,  that  he  should  be  required  to 
omit  the  word  "Company"  from  his 
mark.  United  States  Frame  &  Picture 
Co.  V.  Horowitz,  51  Misc.  (N.  Y.)  101- 
1900;  100  N.  Y.  Supp.  705;  139  A.  D. 


Evidence  to  Prove  Secondary  Meaning 


599 


can  only  obtain  it  by  proving  further,  that  the  defendant  is 
using  it  under  such  circumstances  or  in  such  a  manner  as  to  put 
off  his  goods  as  the  goods  of  the  plaintiff. ^'*" 


895;  aff'd  204  N.  Y.  630-1912.  Plain- 
tiff, the  "United  States  Frame  & 
Picture  Company,"  was  a  corpora- 
tion engaged  for  some  years  in  business 
at  No.  3  Barclay  street.  Defendant 
was  the  brother  of  its  president,  and 
had  himself  been  an  employee  and 
officer  of  the  company  until  1905, 
when  he  left  it  and  engaged  inde- 
pendently in  the  same  line  of  business 
at  86  Fulton  street  under  the  trade 
name  of  "New  York  Frame  &  Picture 
Company."  It  was  held  that  defend- 
ant was  entitled  to  use  this  name,  but 
he  was  enjoined  from  using,  for  ad- 
vertising, stationery  closely  resembling 
plaintiff's,  and  from  publication  of 
notices  of  removal  so  worded  as  to 
lead  the  unwary  to  suppose  that  the 
plaintiff  was  referred  to.  Stirling  Silk 
Mfg.  Co.  V.  Sterling  Silk  Co.,  59  N. 
J.  Eq.  394-96-1900;  46  Atl.  199. 
"The  name  of  'The  Sterling  Silk 
Company'  is  so  similar  to  that  of 
*  *  *  'The  Stirling  Silk  Manufac- 
turing Company '  that  with  purchasers 
at  retail,  there  is  danger  of  confusing 
complainant's  goods  with  defendants." 
Commonwealth  v.  Banks,  198  Pa.  St. 
397-1901 ;  48  Atl.  277.  This  was  a  bill 
in  equity  by  the  attorney-general  to 
enjoin  the  defendant,  the  proprietor 
of  a  purely  commercial  or  business 
school,  from  using  the  name  "Univer- 
sity of  Philadelphia,"  principally  upon 
the  ground  that  the  use  of  the  word 
"University"  was  misleading  and 
unauthorized.  It  was  also  urged  that 
the  similarity  of  the  name  to  that  of 
the  University  of  Pennsylvania  led  to 


confusion  and  mistakes,  and  the  court, 
in  granting  the  injunction,  say  that 
therefore  the  University  of  Pennsyl- 
vania, and  persons  dealing  with  it, 
would  be  entitled  "to  protection  under 
the  law  relating  to  trade-marks, 
against  the  use  of  a  name  which  is 
similar  in  point  of  territorial  designa- 
tion and  misleads  the  pubHc"  (at 
p.  401).  Western  Grocer  Co.  v.  Caf- 
farelli,  108  S.  W.  413.  See  also  102 
Tex.  104  for  a  further  decision  of  this 
case.  Plaintiff  and  its  predecessors, 
wholesale  grocers  at  San  Antonio,  had 
for  some  years  used  the  words  "Geor- 
gia Coon,"  as  a  trade-mark  for  their 
molasses  and  syrups,  which  came  to 
be  known  and  were  popularly  desig- 
nated simply  as  "Coon  Molasses." 
Held,  that  defendants  were  not  en- 
titled to  sell  their  molasses  under  the 
title  "New  Coon."  Germer  Stove 
Co.  V.  Art  Stove  Co.,  150  Fed.  141- 
1907  (C.  C.  A.  6th  Cir.).  Com- 
plainants made  and  sold  stoves  called 
"Radiant  Home  Stoves,"  and  adver- 
tised them  extensively  as  containing 
the  "XX  Century  Fire-Pot,"  by 
which  name  a  patented  fire-pot,  used 
also  by  other  manufacturers,  had 
come  to  be  known.  Defendant  made 
and  sold,  under  the  name  "Twentieth 
Century  Laurel,"  a  stove  containing  a 
somewhat  similar  fire-pot,  but  the 
stove  was  plainly  marked  with  de- 
fendant's name.  Held  not  to  be  un- 
fair competition.  Worcester  Brewing 
Co.  V.  Rueter  &  Co.,  157  Fed.  217- 
1907  (C.  C.  A.  1st  Cir.).  "Sterling 
Ale"  was  held  to  be  not  purely  de- 


«"  Reddaway  v.  Banham,  13  R.  P.      Clothing  Co.  v.  Maxton,  1899,  A.  C. 
C.  218;    1896,   A.    C.    199;    Cellular     326;  16  R.  P.  C.  307. 


600 


Evidence! 


Secondary  meaning  is  a  question  of  fact.  It  rests  entirely 
upon  evidence  produced  in  support  of  its  existence.  The  evidence 
of  investigators  that  they  had  visited  various  stores  asking  for 
an  article  under  a  descriptive  name,  and  in  the  majority  of  cases 
received  the  complainant's  product,  is  usually  considered  good 
evidence  of  secondary  meaning.  There  are  cases,  however,  to  the 
contrary.""'  See  §337. 
scriptivc,  but  to  he  entitled  to  protec- 
tion against  a  corporation  formed  by 
one  who  had  been  in  the  employ  of  the 
original  manufacturer,  which  put  on 
the  market  "Worcester  Sterling  Ale" 
without  clearly  pointing  out  to  the 
public  the  difference  in  origin.  Brown 
Chemical  Co.  v.  Frederick  Stearns  & 
Co.,  37  Fed.  360-1889  (C.  C.  E. 
D.  Mich.).  Plaintiff  manufactured 
"Brown's  Iron  Bitters,"  while  de- 
fendant, a  Michigan  corporation, 
manufactured  a  similar  preparation 
called  "Iron  Tonic  Bitters."  There 
was  a  sufficient  differentiation  in 
packages  and  labels,  but  in  certain 
cases,  at  the  request  of  particular 
dealers,  defendant  printed  at  the  foot 
of  the  label  "Brown  &  Co.,  New  York 
City,"  in  place  of  defendant's  name. 
There  was  evidence  that  at  least  one 
dealer  had  attempted  to  palm  off 
defendant's-  package  as  plaintiff's. 
Held,  that  plaintiff  was  entitled  to  an 
injunction  against  this  practice  with- 
out regard  to  the  honesty  of  defend- 
ant's intentions.  Dr.  Peter  H.  Fahr- 
ncy  &  Sons  Co.  v.  Ruminer,  153  Fed. 
73.5-1907  (C.  C.  A.  7th  Cir.).  Com- 
plainant had  long  advertised  and  sold 
a  patent  medicine  under  the  name 
"Alpenkrauter."  Held,  that  defend- 
ant's advertiscm(;nt  of  a  similar  med- 
icine as  "St.  Bernard  Alpen  Krauter" 
constituted  imfair  competition. 

«''  Kellogg  Toasted  Com  Flnke  Co.  v. 
Quaker  Oats  Co., 235  Fed.  Rep. 657-665. 
Warrington,  C.  J.,  said,  in  regard  to 
the  evidence  procured  l)y  investigators: 


"Another  feature  of  the  record  is  to 
be  noted.  In  May,  1911,  appellant 
caused  21  women  each  to  call  at  from 
15  to  25  retail  grocery  stores  to  pur- 
chase 'Toasted  Corn  Flakes,'  with- 
out disclosing  name  of  manufacturer, 
and  ostensibly  in  their  own  behalf; 
these  instructions  were  carried  out  in 
8  cities  located,  respectively,  in  Ohio, 
Illinois,  Iowa,  Minnesota,  and  North 
Dakota.  Nine  of  the  women  made 
their  purchases  in  different  stores  in 
Chicago,  four  likewise  in  Minneapolis, 
two  in  Des  Moines,  and  two  in  Duluth, 
and  each  of  the  rest  in  a  different  city. 
The  result  was  to  secure  about  80  per 
cent,  of  Kellogg's  toasted  corn  flakes, 
and  the  rest  in  other  brands.  It  was 
developed  in  this  testimony  that  aside 
from  the  Kellogg  brand  there  were 
then  15  other  brands  of  toasted  corn 
flakes  on  the  market,  though  it  does 
not  appear  how  long  before  May,  1911, 
the  other  brands  were  or  how  long 
since  then  they  have  been  on  sale.  It 
is  observable  that  each  of  these  other 
brands  bore  a  name,  in  one  instance 
the  initials  'E.  C.,'  immediately  pre- 
ceding the  words  'Toasted  Corn 
Flakes,'  in  the  same  way  as  appellant 
and  its  predecessors  have  used  the 
names  'Sanitas'  and  'Kellogg's' 
preceding  those  words.  It  is  further 
to  be  noticed  that  these  women  made 
their  purchases  of  dealers  whose  ob- 
vious interest  in  the  sale  of  toasted 
corn  flakes  and  their  consequent 
knowledge  of  the  subject  could  scarcely 
be  accredited  to  the  ordinary  class  of 


Proof  of  Actual  Deceit  of  Purchasers  601 

The  general  rules  as  to  the  evidence  necessary  to  prove  such  cases 
are  discussed  in  the  chapter  on  "Secondary  Meaning." 

Carpenter,  J.,  has  said :  "That  the  public  is  deceived, may  be  evi- 
dence of  the  fact  that  the  original  proprietor's  rights  are  being 
invaded.  If,  however,  the  rights  of  the  original  proprietor  are 
in  no  wise  interfered  with,  the  deception  of  the  public  is  no  con- 
cern of  a  court  of  chancery."  ^^  It  is  seen  from  this  case  that  there 
may  be  evidence  of  the  defendant's  intent  to  defraud  the  plaintiff 
and  yet  no  cause  of  action — because  no  existing  competition, 

§  335.  Proof  of  Instances  of  Actual  Bona  Fide  Deceit  of  Pur- 
chasers. —  Proof  of  instances  of  deceit  is  always  interesting  and 
instructive.  The  absence  of  such  evidence  is  often  the  occasion  of 
oratory  on  the  part  of  defendant's  counsel;  but  as  a  matter  of 
actual  proof  of  the  facts  of  the  issue  proof  of  such  instances  is 
valuable  largely  as  demonstrating  the  industry  of  the  plaintiff's 
counsel  or  his  good  luck  in  finding  out  evidence  of  this  character; 
it  is  not  necessary  to  establish  a  cause  of  action.  It  was  once  said 
that,  "If  one  case  of  actual  deception  is  proved,  there  is  no  more 
to  be  said  on  either  side.  The  case  is  at  an  end.  Argument  really 
only  takes  place  where  there  is  no  proved  case  of  actual  decep- 
tion." ^2 

This  is  not  the  rule  usually  adopted  in  these  cases.  The  fact 
that  no  actual  cases  of  confusion  are  proved  is  not  conclusive  on 
the  court.  Regardless  of  proof  of  this  sort  it  must  decide  on  the 
facts  as  to  the  marks  used  by  the  parties  and  on  the  evidence  of 
the  market  conditions  surrounding  the  everyday  use  of  the  marks 

real  customers;  and  hence  such  testi-  brands  of  toasted  corn  flakes,  as,  for 
mony  lends  little  aid  in  support  of  the  instance  the  cartons  of  appellant  from 
claim  of  secondary  meaning  urged  those  of  the  defendant." 
here.  It  is  conceivable  that  some  of  '^^  Borden  v.  Borden,  201  Fed.  510- 
these  dealers,  and  presumably  the  1912  (C.  C.  A.),  citing  yl/nenca?i  IFas/j- 
minority,  were  actually  selling  one  or  board  Co.  v.  Saginaw  Co.,  103  Fed. 
more  of  the  other  brands,  in  as  great,  281;  50  L.  R.  A.  609. 
if  not  greater,  quantities,  than  the  *-Liebig  Co.  v.  Chemists  Co.,  13  R.  P. 
Kellogg  brand;  and  certainly  the  C.  635.  See  also  T.  A.  Vulcan  v.  E. 
minority  did  not  regard  the  disputed  Myers,  139  N.  Y.  364;  Manufacturing 
words  as  signifying  only  the  appel-  Co.  v.  Trainer,  101  U.  S.  51;  iVa^  Bis- 
lant's  brand.  It  is,  moreover,  to  be  cuit  Co.  v.  Baker,  95  Fed.  135  (C.  C.  S. 
observed  of  the  testimony  of  these  D.)  1899;  Fuller  v.  Huff,  43  C.  C.  A. 
women  that  they  all  in  substance  testi-  453;  Hygeia  Distilled  Water  Co.  v.  Can- 
ned that  they  had  no  difficulty  what-  solidated  Ice  Co.,  144  Fed.  139;  1906. 
ever   in   distinguishing   the   different 


602  Evidence 

whether  or  not  the  defendant's  acts  will  be  likely  to  cause  con- 
fusion. 

E\ddence  of  actual  deception  or  confusion  should  be  offered 
whenever  inspection  or  comparison  and  the  other  facts  brought 
out  on  the  trial  leave  doubt  as  to  the  necessary  result  of  defend- 
ant's acts.  For  example,  although  ''Bank  of  Michigan  "  was  not 
considered  sufficiently  similar  to  ''Michigan  Savings  Bank"  to 
justify  an  injunction  against  its  use  before  any  business  was  done 
under  that  name,  the  question  was  still  left  open  whether  subse- 
quent experience  might  not  demonstrate  that  the  use  of  the  name 
actually  misled  the  public*^ 

Instances  of  actual  mistake  on  the  part  of  purchasers  and  sim- 
ilar facts  are  frequently  shown,  as,  for  example,  that  retailers  re- 
turned defective  "French"  garters  to  the  makers  of  "Paris" 
garters.'*^     Such  evidence  is  valuable  but  not  vital. 

§  336.  Burden  of  Proof.  —  Where,  after  a  mark  has  been  in 
use  for  a  considerable  period,  a  rival  of  the  user  appropriates  the 
material  and  essential  features  of  it,  the  burden  of  proof  is  not 
upon  the  first  user  to  show  the  deceitful  character  of  the  second 
user's  device;  but  upon  the  latter  to  demonstrate  that  his  device 
can  be  used  without  causing  confusion  or  deceit.  Were  this  not 
the  rule  the  bona  fide  users  of  marks  might  be  subject  to  con- 
stant call  on  the  part  of  infringers  to  demonstrate  the  validity  of 
their  rights  in  such  marks.  Having  shown  the  facts,  the  length 
of  use  of  his  mark,  the  conditions  under  which  it  is  used,  and 
offered  e\'idence  as  to  the  marks  later  adopted  and  used  by  the 
defendant,  the  burden  is  then  upon  the  defendant  to  show  that 
his  use  of  his  mark  is  fair.^^"    But  in  an  action  for  unfair  competi- 

"  Michigan  Savings  Bank  v.  Dime  Plaintiffs'.    In  Ford  v.  Foster  (li.  R. 

Savings  Bank,  162  IMich.  297.  7  Ch.  611)  Lord  Justice  James  made 

^M.  Stein  &  Co.  v.  Liberty  Co.,  198  this  observation  (L.  R.  7  Ch.  623); 

Fed.  959,  D.  C.  S.  D.  N.  Y.  (1912).  'The  phiintiff  makes  this  prima  facie 

**"  Ford  V.  Foster,  L.  R.  7  Ch.  611;  case  —  that    he    has    a    plain    trade- 

Orr-Ewing  v.  Johnson,  13  Ch.  Div.  434.  mark,  a  material  and  substantial  part 

"What,  then,  is  the  result  of  this  tak-  of  which  has  been  taken  by  the  de- 

ing  of  a  substantial  part  of  the  plain-  fendants.     Then  the  onus  is,  under 

tiffs'  ticket?    It  appears  to  me  that  it  those   circumstances,   cast   upon   the 

throws  upon  the  defendants  the  bur-  defendants  to  relieve  themselves  from 

den  of  proving  that  their  ticket  did  that  prima  facie  liability;'  and  it  ap- 

not  deceive  purchasers  into  the  belief  pears  to  me  to  be  in  accordance  with 

tliat  the  Defendants'  goods  were  the  this  view  of  the  Lord  Justice  that  Lord 


Evidence  of  Investigators  Employed  by  Plaintiff    G03 

tion  based  on  the  use  by  the  defendant  of  a  descriptive  word  in  a 
secondary  sense  indicating  the  plaintiff's  business  or  product,  the 
burden  of  proof  is  on  the  plaintiff  to  show  that  the  word  has 
acquired  such  secondary  meaning  '*'*^,  and  where  both  the  plain- 
tiff and  the  defendant  claim  title  to  a  trade-mark  derived  from  the 
same  source,  the  plaintiff  has  the  burden  of  establishing  his  owner- 
ship.44^ 

§  337.  Evidence  of  Investigators  Employed  by  Plaintiff.  — 
Evidence  of  unfair  competition  is  often  very  difficult  to  obtain. 
Often  investigators  must  be  used  to  obtain  it  through  test  pur- 
chases of  defendant's  goods  in  the  open  market.  Such  investi- 
gators are  not  deceived  in  making  purchases,  but  that  does  not 
make  their  evidence  inadmissible  or  detract  from  its  weight.  It 
is  important  as  showing  the  course  of  action  pursued  by  the  de- 
fendant, —  his  normal  use  of  his  marks.  Such  evidence  is  a 
valuable  aid  to  the  court  in  deciding  as  to  the  effect  of  his  acts 
on  the  sale  of  plaintiff's  goods  and  upon  the  minds  of  buyers. 
Where  there  is  no  proof  of  sales  to  persons  other  than  detectives 
in  the  employ  of  plaintiffs,  defendant  often  urges  that  no  injunc- 
tion should  issue,  inasmuch  as  no  such  course  of  conduct  has  been 
proved  as  will  show  by  a  clear  preponderance  of  the  evidence 
that  there  was  intentional  fraud,  or  that  plaintiff  has  no  cause  of 
complaint  against  a  defendant  for  damages  resulting  from  an  act 
done  by  defendant  at  the  instance  and  sohcitation  of  plaintiffs' 
agents.  If  the  defendant's  employees  did  not  know  at  the  time 
that  the  purchasers  were  detectives,  evidence  of  this  sort  discloses 
their  intent  and  purpose  exactly  the  same  as  if  the  sales  were  made 
to  purchasers  not  buying  in  order  to  obtain  evidence  against  the 
seller. 

In  Julius  Kessler  &  Co.  v.  Goldstrom,'^^'^  the  Court  of  Appeals 

O'Hagan,  in  Singer  Machine  Manu-  hibited  in  the  course  of  human  af- 
fadurers  v.  Wilson  (3  App.  Cas.  376)  fairs.' "     Sebastian's  Law  of  Trade- 
said  (3  App.  Cas.  395)    'If  one  man  Marks  (Fifth  Ed.),  140;  see  also  Lcmi- 
will  use  a  name  the  use  of  which  has  bert  Pharmacol  Co.  v.  Bolton  Chemical 
been  validly  appropriated  by  another.  Corporation,  219  Fed.  325. 
he  ought  to  use  it  under  such  circum-  "^  Kellogg  Toasted  Corn  Flake  Co.  v. 
stances  and  with  such  sufficient  pre-  Quaker  Oats  Co.,  235  Fed.  657. 
cautions  that  the  reasonable  probabil-  **'^  Carroll  v.  Duluth  Superior  Mill- 
ity  of  error  should  be  avoided,  not-  ing  Co.,  232  Fed.  675. 
withstanding  the  want  of  care  and  ^"'^  177  Fed.  392. 
caution    which   is   so   commonly   ex- 


604  Evidence 

for  the  Eighth  Circuit  in  reversing  a  decree  of  the  lower  court, 
commented  upon  the  argument  to  the  effect  that  a  sale  to  emis- 
saries of  the  complainant  did  not  warrant  a  decree  for  an  in- 
fringement of  a  trade-mark  and  for  an  accounting,  holding  that, 
notwithstanding  the  sale  to  the  agent  of  the  complainant,  the 
intent  of  the  defendant  was  disclosed  exactly  as  if  the  sale  had 
been  to  a  real  purchaser,  it  appearing  that  the  defendant  did 
not  know  at  the  time  that  the  purchasers  were  acting  for  com- 
plainant. The  court  was  of  the  opinion  that  the  motives  and 
actions  were  to  be  judged  from  the  viewpoint  of  the  understand- 
ing of  the  facts  by  the  defendant  who  sold  the  goods. 

"It  is  not  necessary  to  prove  a  course  of  business  in  order  to 
warrant  an  injunction.  I  do  not  think  that  it  is  incumbent  upon 
the  plaintiff  to  establish  a  habit  by  showing  very  many  sales;  it 
is  enough  that  plaintiff  has  established  several  sales  from  which 
must  be  deduced  the  fact  that  defendant  was  willing  to  make 
further  sales,  and  that  in  several  of  the  stores  owned  by  defendant 
its  agents  were  ready  to  make  sales  is  clearly  estabhshed.^^  " 

§  338.  Loss  of  Business  by  Complainant  as  Evidence.  — 
Evidence  that  complainant's  business  has  fallen  off  coinciden- 
tally  with  defendant's  unfair  acts,  justifies  the  inference  that 
the  business  lost  was  diverted  by  the  defendant's  acts.""^ 

§  339.  Time — Presumption  of  Continuance.  —  It  is  not  safe  to 
depend  on  any  presumption  of  the  continuance  of  a  course  of  ac- 
tion proved  as  of  a  certain  time,  especially  if  it  is  wrongful. 
The  evidence  should  be  brought  down  to  the  time  of  filing  the 
bill  of  complaint,  —  evidence  of  unfair  acts  that  have  been  discon- 
tinued is  ordinarily  insufficient.''^ 

45  Hennessy  v.  Wine  Growers  Asso.,  C.  C.  S.  D.  N.  Y.  (1901);  Hosteller  Co. 

212  Fed.  308-11,  D.  C.  S.  D.  N.  Y.  y.  Schneider,  107  Fed.  705,  C.  C.  Mo. 

(1914),   citing    Gorham    Mfg.    Co.    v.  (1900);  Hosteller  Co.  v.  Sommers,  84 

Sch7nidt,  196  Fed.  955,  D.  C.  S.  D.  N.  Fed.  333,  C.  C.  S.  D.  N.  Y.  (1897); 

Y.  iim2)  ;Jidiiis  Kessler  &  Co.  y.  Gold-  Hosteller  Co.  v.  Becker,  73  Fed.  297, 

slrom,  177  Fed.  392;  A.  B.  Dick  Co.  v.  C.  C.  S.  D.  N.  Y.  (1896);  Hosteller  Co. 

Henry,  149  Fed.  424,  C.  C.  S.  D.  N.  Y.  v.  Brueggcman,  46  Fed.  188,  C.  C.  E. 

(1907);  Badische  Anilin  &c.  v.  Klip-  D.  Mo.  (1891). 

stein,  125  Fed.  543,  556,  C.  C.  S.  D.  N.  «  shaw  &  Co.  v.  Pilling  &  Co.,  175 

Y.  (1903);  Samuel  &  Co.  v.  Hostetter,  Pa.  St.  78. 

USFed.  257,  CCA.  9th  Cir.  (1902);  *■>  Ferguson-McKinney    Dry    Goods 

Chicago  P.  T.  Co.  v.  Phil.  P.  T.  Co.,  Co.  v.  J.  A.  Scriven  Co.,  165  Fed.  655 

118Fed.  852,  CCS.  D.N.  Y.  (1902);  (C    C    A.)-1908    (no    unfair    acts 

Hosteller  Co.  v.  Conron,  111  Fed.  737,  within  two  years). 


Judicial  Notice  605 

§  340.  Judicial  Notice.  —  Judicial  notice  will  be  taken  of  facts  of 
common  knowledge,  such  as  the  existence  and  general  character 
of  the  organization  known  as  "Boy  Scouts,"  *'**  but  not  of  the 
meaning  of  foreign  words,  or  of  foreign  customs."*^ 

§  341.  Weight  and  Credibility  of  Evidence.  —  Affidavits  in  ste- 
reotyped form,  prepared  without  seeing  the  witnesses  and  sent 
to  a  number  of  persons  for  verification,  are  entitled  to  little 
credit.'^" 

Oral  testimony  as  to  matters  30  years  old,  and  indefinite  in 
character,  may  be  rejected,  where  it  appears  that  written  records 
of  the  facts  are  available  but  are  not  produced.''^ 

In  case  of  acts  clearly  wrongful  (as,  for  example,  the  direct 
substitution  of  goods),  slight  evidence  may  be  enough  to  warrant 
preliminary  injunction.''- 

§  342.  Discovery  and  Examination  before  Trial.  —  Examina- 
tion of  a  plaintiff  has  been  allowed  on  such  matters  as  reports  of 
sales,  ingredients  of  product,  etc.  (the  matter  of  ingredients  being 
relevant  to  an  issue  raised  as  to  whether  plaintiff  had  truthfully 
represented  its  product.)  ^^ 

Examination  of  defendants  before  trial  has  likewise  been  allowed 
as  to  plaintiff's  right  to  use  the  trade  name  in  question,  and  as  to 
an  alleged  conspiracy  of  the  defendants  to  infringe  plaintiff's 
right  and  injure  its  business. '^^ 

Discovery  of  the  names  of  particular  purchasers  alleged  to  have 
been  deceived,  however,  will  not  ordinarily  be  required.  ^^ 

§  343.  Evidence  of  Acts  of  Employees.  — ^  Evidence  of  admissions 
by  employees  of  wrongful  acts  may  be  sufficient,  ^^  although  mis- 
representations made  by  employees  do  not  in  every  case  estab- 
lish fraudulent  conduct   for  which  the  principal  is  to  be  held 

*^Re  Excelsior  Shoe  Co.,  40  App.  ^^  Horlick's    Malted    Milk    Co.    v. 

D.  C.  480.  A.  Spiegel  Co.,  155  Wis.  201-1913. 

*^  Rossman  v.  Gamier,  211  Fed.  401,  ^"^  Solar  Baking  Powder  Co.  v.  Royal 

C.  C.  A.  8th  Cir.  (1914).  Bakirig  Powder  Co.,  128  App.  Div.  (N. 

■*"  Seeger  Refrig.  Co.  v.  White  Enamel  Y).  550. 

R.  Co.,  178  Fed.  567,  C.  C.  D.  Minn.  ^^  United  Lace  Co.  v.  Barthels  Mfg. 

(1910);  Carroll  v.  Ertheiler,  1  Fed.  688,  Co.,  213  Fed.  535,  D.  C.  E.  D.  N.  Y. 

C.  C.  E.  D.  Pa.  (1880).  (1914). 

^^  American  Stove  Co.  V.  Detroit  Stove  ^^  Hosteller  Co.  v.  Conron,  111  Fed. 

Works,  31  App.  D.  C.  304.  737,  C.  C.  S.  D.  N.  Y.  (1901). 

^2  Holeproof  Hosiery  Co.  v.  Wallach 
Bros.,  192  Fed.  534,  C.  C.  A.  (1911). 


()06  Evidence 

liable,"  and  sporadic  instances  of  misrepresentations  by  unidenti- 
fied employees,  though  admissible,  is  entitled  to  but  little 
weight.''^ 

§  344.  Evidence  of  Registration,  Effect  of.  —  It  has  been  con- 
sidered that  the  registration  of  a  trade-mark  in  the  Patent  Office 
may  be  treated  as  affording  some  evidence  in  favor  of  its  valid- 
ity.^» 

Registration  may  be  shown  to  prove  what  was  claimed  as  a 
trade-mark  at  a  certain  date,^°  and  as  evidence  of  acquiring 
secondary  meaning/'^  but  in  a  suit  for  unfair  competition,  where 
there  is  no  issue  in  the  pleadings  as  to  any  rights  arising  under  a 
registered  trade-mark,  the  rights  of  the  parties  must  be  deter- 
mined in  relation  to  the  facts  as  they  existed  at  the  time  suit  was 
brought,  and  if  the  plaintiff  subsequently  acquires  rights  by  reg- 
istering his  trade-mark,  the  rights  so  acquired  must  be  asserted 
in  a  separate  suit.^^ 

Entries  in  an  account  book  over  30  years  old,  in  proper  cus- 
tody, have  been  admitted.^^ 

§  345.  Evidence  as  to  Use  of  a  Trade-Mark.  —  Use  of  a  mark, 
although  it  occupies  too  insignificant  a  place  in  the  total  make-up 

"  Hostetter  v.  Brunn,  107  Fed.  707,  215  Fed.  443,  447,  D.  C.  S.  D.  N.  Y. 

C.  C.  S.  D.  Cal.  (1901).     Wellborn,  (1914). 

J.,   p.    707:   "The  only  transactions  ^^  Hygeia    Distilkd    Water    Co.    v. 

proven,  or  attempted   to  be  proven  Hygeia  Ice  Co.,  70  Conn.  516,   534 

*    *    *    were    instigated    by    com-  (quoting    from    Insurance    Oil    Tank 

plainant,  and  took  place  between  an  Co.  v.  Scott,  33  La.  Ann.  946,  952: 

employe  of  the  defendant  and  com-  "The  authorities  of  the  patent  office, 

plainant 's    agents.      The    defendant  from    long    experience,    are    familiar 

himself  repudiates  said  transactions,  with    the   law    of    trade-marks;    and 

and  denies  positively  that  he  author-  their  decisions,  though  not  conclusive, 

ized  them,  or  that  any  similar  ones  are  entitled  to  great  consideration  by 

occurred  or  were  ever  contemplated  the   courts   in   the   determination   of 

by    him    in    his    business.     *    *     *  such  questions"). 

The  question  here  presented  may  be  «» Richler  v.  Reynolds,  59  Fed.  577 

stated  thus:  Will  the  court,  from  un-  (C.  C.  A.)-1893. 

authorized  acts  of  an  agent,  conclu-  ^i  American    Lead    Pencil    Co.    v. 

sively  presume  against  the  principal  L.  Gottlieb  &  Sons,  181  Fed.  178,  C.  C. 

a   corresponding   custom,   where   the  S.  D.  N.  Y.  (1910). 

existence  of  such  a  custom  is  nega-  ^^  American  Specialty  Co.  v.  Collis 

tived    by    other    adequate    proofs?  Co.,  235  Fed.  929. 

This  question,  it  seems  to  me,  must  "'  H.  C.  Cole  &  Co.  v.  Wm.  Lea  & 

be  answered  in  the  negative."  Sons  Co.,  35  App.  D.  C.  355. 

^^  Moebius  v.  Louis  Dejonge  &  Co., 


Inferences  and  Presumptions 


607 


of  the  package  in  which  goods  are  sold  to  serve  as  a  trade-mark, 
and  is  therefore  ineffective  as  evidence  to  estabhsh  a  trade-mark 
right,  may  be  effective  evidence  against  abandonment,  as  showing 
an  honest  intent  to  use  the  trade-mark.*'^  Where  a  plaintiff  in 
some  instances  used  merely  half  of  his  trade-mark,  but  such  use 
was  so  distinctive  as  to  indicate  the  trade-mark  and  only  that, 
such  user  is  evidence  of  actual  use  of  the  trade-mark.*^'' 

§  346.  Inferences  and  Presumptions.  —  The  sale  of  goods  may 
sometimes  be  inferred  from  proof  of  their  manufacture.^*' 

So  use  of  articles,  such  as  labels  and  boxes,  may  be  presmned 
where  they  are  shown  to  have  been  purchased  during  a  long 
period.^^ 

It  may  oe  presumed  that  a  name  used  as  a  trade-mark  and 
trade  name  for  a  patented  article  during  the  life  of  the  patent 
has  become  'Hhe  identifying  and  generic  mark"  of  the  patented 
article.^^ 


*^  Waldes  &  Co.  v.  International 
Manufacturers^  Agency,  237  Fed.  502. 

"^  Waldes  &  Co.  v.  International 
Manufacturers'  Agency,  237  Fed.  502. 

^American  Stove  Co.  v.  Detroit 
Stove  Works,  31  App.  Cas.  D.  C.  304- 
1908. 


8^  Wm.  Wrigley,  Jr.,  &  Co.  v.  Norris, 
34  App.  D.  C.  138. 

^  Frank  W.  Whitcher  Co.  v.  Sneier- 
son,  205  Fed.  767,  D.  C.  D.  Mass. 
(1913).  C'Circlette"  for  heel  pro- 
tectors). 


CHAPTER  XXII 
Intent  to  Defraud  —  Must  It  Be  Proved? 

Section  347.  Question  of  intent  is  a  plea  raised  by  defense. 

348.  Division  of  cases  as  regards  intent. 

349.  Cases  liolding  that  intent  is  immaterial. 

350.  Summary  of  English  rule  as  to  proof  of  intent. 

351.  American  cases  as  to  necessity  of  proof  of  intent. 

352.  First  user  of  a  mark,  rights  of,  arising  out  of  priority. 

353.  Denial  of  intent  will  not  avail  defendant. 

354.  The  action  for  unfair  competition   is  based   on  injury  to    the 

])laintiff,  not  on  the  intent  of  the  defendant  to  injure  the 
plaintiff. 

355.  Proof  of  specific  orders  to  his  agents  and  servants  to  act  fairly  will 

not  excuse  defendant. 

356.  Actual  injury  to  plaintiff  by  defendant  must  be  imminent. 

357.  Unimportant  facts  not  a  basis  of  presumption  of  intent  to  de- 

fraud. 

358.  Fraudulent  intent  may  be  presumed. 

359.  Presumption  of  fraud  may  arise  from  similarity  of  name  or  get-up. 

360.  Presumption  of  fraud  arises  from  so  selling  goods  chat  vendee  may 

pass  them  off  fraudulently. 

361.  Presumption  may  be  based  on  manner  in  which  the  truth  is 

told. 

Intent,  in  unfair  competition  law,  is  the  character  which  the 
law  imputes  to  an  act,  not  the  purpose  which  the  doer  of  the  act 
actually  had  in  mind  in  committing  it. 

John  Cutler,  Esq.,  editor  of  "Reports  of  Patents-Design  and 
Trade-Mark  Cases  —  (the  R.  P.  C")  in  his  lectures  on  "Passing- 
Off"  —  London,  1904,  says  that:  "An  intention  to  imitate  or 
copy,  and  an  intention  to  pass  o(T  are  two  distinct  things.  The 
former  may  be  legal,  but  the  latter  never  can"  (p.  G). 

The  law  of  unfair  competition  deals  with  acts  which  injure 
or  are  likely  to  injure  others  —  acts  which  the  law  will  hold  were 
committed  with  such  a  purpose,  regardless  of  whether  the  actor 
is  shown  to  have  so  intended  them. 

In  unfair  competition  cases,  statements  will  be  found  to  the 
effect  that  definite  proof  of  fraudulent  purpose  on  the  part  of  the 
608 


Question  of  Intent  Is  Plea  Raised  by  Defense    609 

defendant  is  necessary  to  the  action,  while  other  cases  hold  that 
the  rule  is  that  no  such  proof  need  be  offered.  Some  of  these 
statements  are  considered  in  this  chapter  in  an  attempt  to  dis- 
cover the  true  rule. 

§  347.  Question  of  Intent  is  a  Plea  Raised  by  Defense. — 
This  question  is  not  important  in  technical  trade-mark  cases. 
The  property  right  of  a  person  in  a  technical  trade-mark  may  be 
infringed  unintentionally  as  well  as  fraudulently,  and  the  inno- 
cent infringement  will  be  restrained  irrespective  of  the  question 
of  intention.^  ''In  the  instance  of  a  lawfully  registered  trade- 
mark, the  fact  of  its  use  by  another  creates  a  cause  of  action.  In 
the  instance  of  the  use  in  bad  faith  of  a  sign,  not  in  itself  sus- 
ceptible of  being  a  valid  trade-mark,  but  so  employed  as  to 
have  acquired  a  secondary  meaning,  the  whole  matter  lies  in 
pais.    ^ 

See  §  163  as  to  Malice  in  actions  based  on  interference  with 
contract. 

The  plea  of  a  defendant  that  his  offense  was  not  intended  — 
that  he  acted  in  ignorance  of  the  plaintiff's  rights  may  be  im- 
portant as  to  the  amount  of  discredit  resulting  to  the  defendant 
from  his  acts:  it  does  not  in  the  least  mitigate  the  injurious  effect 
upon  the  plaintiff  of  what  he  has  actually  done. 

Here  as  elsewhere  there  may  be  damnum  absque  injuria.  Equity 
cannot  protect  against  every  wrong  that  is  committed.  Some 
injuries  must  be  suffered  for  which  there  can  be  no  remedy.  In 
cases  involving  names  that  have  acquired  a  secondary  meaning, 
the  question  of  fraud  is  much  simpHfied,  because  ''when  one  has 
caused  a  particular  species  of  manufacture  to  be  characterized  by 
certain  marks  or  symbols,  and  given  the  article  such  currency  in 
trade  that  it  is  identified  with  the  mark,  the  law  holds  him  to  be 
possessed  of  a  property  in  such  mark."^  The  possession  of  this 
property  interest  gives  complainant  rights,  which  are  practically 
the  same  as  those  of  the  owner  of  a  technical  trade-mark,  viz.: 
rights  sufficient  to  warrant  a  court  in  protecting  it,  regardless  of 
whether  or  not  one  injuring  it  does  so  with  fraudulent  intent. 

^Day   V.    Webster,    23   App.    Div.  665-1900,  at  p.  677;  44  L.  ed.  363; 

(N.  Y.)   601-1897;  49   N.  Y.  Supp.  21  Sup.  Ct.  270. 

314.  ^The    Mrs.    G.    B.    Miller    &    Co. 

2  Elgin     National     Watch     Co.     v.  Tobacco  MJ'y  v.  Commerce,  45  N.  J. 

Illinois   Watch  Case  Co.,   179   U.   S.  L.  18-23-1883. 


()1()         Tntent  to  Defraud  —  Must  It  Be  PiiovEu? 

Nevertheless,  in  practically  all  cases  involving  secondary  mean- 
ing, the  plea  is  interposed  that  the  defendant  acted  innocently. 
It  is  difficult  to  see  what  bearing  the  defendant's  motive  can 
have  in  face  of  demonstrated  injury  to  the  plaintiff  if  the  sec- 
ondary meaning  be  fully  proven,  for  the  object  of  the  court  is  not 
to  vindicate  the  motives  of  the  defendant  but  to  protect  the 
public  from  confusion  and  prevent  resulting  damage  to  the 
plaintiff. 

The  question,  then,  is  as  to  the  force  of  the  plea,  and  whether  an 
allegation  of  such  intent  on  defendant's  part  is  necessary  in  the 
plaintiff's  bill. 

§  348.  Division  of  Cases  as  Regards  Intent.  —  The  Pennsyl- 
vania court  has  divided  cases  of  unfair  competition  as  regards 
intent  thus:  "There  are  two  classes  of  cases  involving  judicial 
interference  with  the  use  of  names,  first,  where  the  intent  is  to 
get  an  unfair  and  fraudulent  share  of  another's  business,  and 
second,  where  the  effect  of  the  defendant's  action,  irrespective 
of  his  intent,  is  to  produce  confusion  in  the  pubhc  mind  and  con- 
sequent loss  to  the  complainant."^  In  both  cases  the  courts  of 
equity  administer  relief  without  regard  to  the  existence  of  a  tech- 
nical trade-mark.  A  division  of  these  cases  is  suggested  by  the 
United  States  Supreme  Court  in  Lawrence  Mfg.  Co.  v.  Tennessee 
Mfg.  Co.,'^  where  it  says:  "The  deceitful  misrepresentation  or 
perfidious  dealing  must  be  made  out,  or  be  clearly  inferable  from 
the  circumstances." 

We  will  turn,  then,  to  a  consideration  of  the  cases,  in  the 
effort  to  discover  some  principles  of  guidance  as  to  the  necessity 
of  proving  intent.  The  extremes  are  represented  on  the  one 
hand  by  those  that  hold  that  it  is  not  what  the  defendant  in- 
tended, but  what  he  did,  that  a  court  must  consider;  and  on  the 
other  by  those  that  hold  that  the  action  is  based  on  fraud,  which 
must  be  proven,  because  there  can  be  no  relief  against  a  defendant 
who  had  acted  in  good  faith,  although  to  the  injury  of  the  plain- 
tiff. There  can  be  no  division  of  the  cases  by  geographical  lines, 
for  both  here  and  in  England  each  view  is  upheld  by  cases  of 
authority. 

*  American  Clay  Manufacturing  Co.         » 138  U.  S.  537-51-1890;  34  L.  ed. 
of  Pa.  V.  Am.  Clay  Man.  Co.  of  New     997;  11  Sup.  Ct.  396. 
Jersey,  198  Pa.  St.  189-1901,  at  p.  193; 
47  Ail.  Rep.  936. 


Cases  Holding  That  Intent  Is  Immaterial         611 

This  chapter  deals,  not  with  the  cases  in  which  clear  proof  is 
brought  out  of  the  deceitful  intent  of  the  defendant,  in  doing  the 
acts  complained  of,  but  with  those  cases  in  which  it  is  set  up  as  a 
defense  that  the  alleged  wrongful  acts  were  done  in  ignorance  of 
the  plaintiff's  right;  or,  if  not  in  ignorance  of  these  rights,  without 
any  purpose  or  intent  of  injuring  him  directly  or  indirectly. 
Most  of  the  cases  of  unfair  competition  fall  in  the  latter  class;  and 
it  is  frequently  a  serious  question  how  much  proof  must  be  offered 
by  the  plaintiff  as  to  the  defendant's  motive.  What  are  the  re- 
quirements of  proof  to  establish  a  cause  of  action,  how  much 
knowledge  of  the  defendant's  purpose  and  intent  must  be  shown 
to  give  the  court  grounds  on  which  to  grant  relief? 

§  349.  Cases  Holding  that  Intent  is  Immaterial.  —  One  of 
the  earliest  cases  on  this  point  is  Millington  v.  Fox,"  decided  in 
England  hi  1838.  It  is  mentioned  because  it  is  frequently  cited 
here  and  abroad  as  first  laying  down  the  rule  that  the  defend- 
ant's intent  was  not  an  essential  part  of  the  cause  of  action." 
About  the  year  1700,  the  plaintiff's  business  was  founded  by 
Crowley.  In  1782,  Milhngton  became  a  partner.  The  business 
was  thereafter  carried  on  by  him  or  his  descendants  under  the 
name  of  "Crowley,  Millington  &  Company."  The  steel  they 
made  became  known  as  ''Crowley's"  steel  or  ''Crowley  Mil- 
lington" steel  and  was  distinguished  by  certain  marks  on  the 
steel,  the  principal  ones  being  either  "Crowley"  or  "Crowley 
Millington,"  also  the  letters  "I.  H.,"  being  the  initials  of  their 
principal  workman.  Six  years  before  the  filing  of  the  bill.  Fox 
began  to  mark  steel  with  these  said  marks  of  the  plaintiffs.  He 
alleged  that  "Crowley"  and  "Crowley  Millington"  so  far  as 
he  knew  were  merely  marks,  denoting  certain  kinds  of  steel  that 
had  been  universally  used  in  the  steel  trade  for  many  years  and 
that  he  had  never  heard  of  the  plaintiffs'  firm.  Cottenham,  L.  C, 
considered  that  there  was  no  fraud  in  the  case  and  that  "Crowley  " 

8  Millington  v.  Fox,  3  Myl.  &  Cr.  facturer,  whether  done  scienter  or  not, 

338-1838.      See    also    Ainsworth    v.  is  an  interference  with  his  business 

Walmsley,  L.  R.  1  Eq.  518-25-1866.  which  this  court  will  interpose  to  pre- 

Contention  that,  while  in  a  trade-mark  vent,  on  the  ground  that  the  defend- 

case  the  scienter  need  not  be  proved,  ant  is  endeavoring  to  pass  off  the  goods 

misrepresentation    must    always    be  of  his  own,  or  somebody  else's  manu- 

shown  to  be  willful,   not   sustained,  facture,   as   the  manufacture   of   the 

Wood,  V.  C,  says:  "The  use  there-  plaintiff." 
fore  of  the  name  of  another  manu- 


612         Intent  to  Defraud  —  Must  It  Be  Proved? 

and  "Crowley  Milliiigton"  were  generally  used  in  conversation 
at  least  as  descriptive  of  a  particular  quality  of  steel,  and  added 
"that  circumstance,  however,  does  not  deprive  the  plaintiffs 
of  their  right  to  the  exclusive  use  of  those  names;  and,  therefore, 
I  stated  that  the  case  is  so  made  out  as  to  entitle  the  plaintiffs 
to  have  the  injunction  made  perpetual"  (id.,  p.  352).  There 
was  considerable  evidence  given  to  show  that  the  plaintiffs  hg,d 
known  for  some  time  that  the  name  had  been  used  by  other 
dealers  than  the  defendants  who  marked  their  steel  with  these 
names,  and  it  seemed  to  be  a  fact,  regardless  of  whether  the 
plaintiffs  knew  it  or  not,  that  much  steel  had  been  sold  by  other 
finns  than  the  plaintiffs,  bearing  these  names.  Perpetual  injunc- 
tion granted. 

In  1870,  in  Connecticut,  the  Supreme  Court  of  Errors  de- 
cided Holmes,  Booth  &  Hay  dens  v.  Holmes,  Booth  &  Atwood 
Mfg.  Co?  a  proceeding  in  equity  to  enjoin  the  use  of  a  name. 
The  defense  was  set  up,  that,  in  using  the  name  in  question,  the 
defendants  had  no  intention  of  injuring  the  plaintiffs.  The  court 
said:  "There  are  cases  which  seem  to  establish  the  proposition 
that  neither  fraud  nor  actual  intention  to  do  the  injury  com- 
plained of  is  essential  to  the  petitioner's  case."  ^  "The  ground 
on  wliich  courts  of  equity  afford  reUef  in  this  class  of  cases  is  the 
injury  to  the  party  aggrieved,  and  the  imposition  upon  the 
public  by  causing  them  to  believe  that  the  goods  of  one  man  or 
finn  are  the  production  of  another.  The  existence  of  these  con- 
sequences does  not  necessarily  depend  upon  the  question  whether 
fraud  or  an  evil  intent  does  or  does  not  exist.  The  quo  animo, 
therefore,  would  seem  to  be  an  inmiaterial  inquiry"  (id.  p. 
295-96). 

In  1877,  the  House  of  Lords  in  England  in  Singer  Machine 
Manufacturers  v.  Wilson  ^  held  squarely  that  intent  was  not  essen- 
tial to  relief.  This  case  contains  a  well-considered  opinion  by 
Lord  Cairns  in  which  he  follows  Millington  v.  Fox,^^  and  contends 
that,  whatever  be  the  intent  of  the  defendant  in  passing  off  his 
goods  as  those  of  the  plaintiff,  the  injury  to  the  plaintiff  is  the 

7  Holmes,  Booth  &  Haydens  v.  The  Beav.    292-1862;    Davis    v.    Kendall, 

Holmes,  Booth  &  Atwood  Mfg.  Co.,  37  2  R.  I.  566-1850. 

Conn.  278-1870.  » L.     R.     3    App.    Cas.     376-91- 

« Citing  Millington  v.  Fox,  3  Myl.  1877. 

&  Cr.  338-1838;  Carlier  v.  Carlile,  31  '"3  Myl.  &  Cr.  338-1838. 


Cases  Holding  That  Intent  Is  Immaterial         613 

same;  and  the  action  of  the  court  must  depend  on  the  right  of  the 
plaintiff  in  the  mark  used  or  imitated  by  the  defendant,  rather 
than  on  the  intent  of  the  defendant.  The  case  that  was  the  foun- 
dation for  this  opinion  involved  the  use  of  a  name  of  an  article  on 
which  a  patent  had  expired.  Lord  Cairns  said:  ''I  wish  to  state 
in  the  most  distinct  manner  that,  in  my  opinion,  fraud  is  not  neces- 
sary to  be  averred  or  proved  in  order  to  obtain  protection  for  a 
trade-mark.  The  argument  that  fraud  must  be  proved  assumes 
that  the  trade-mark  of  the  plaintiffs  has  been  adopted  and  used  by 
the  defendant,  but  contends  that  this  use  of  it  is  to  continue  with- 
out restraint  even  after  the  improper  use  has  been  pointed  out, 
merely  because,  in  the  first  instance,  it  took  place  ignorantly  or 
inadvertently.  This  argument  appears  to  me  to  be  founded  on 
a  misapprehension.  A  man  may  take  the  trade-mark  of  another 
ignorantly,  not  knowing  it  was  the  trade-mark  of  the  other;  or 
he  may  take  it  in  the  belief,  mistaken  but  sincerely  entertained, 
that  in  the  manner  in  which  he  is  taking  it  he  is  within  the  law, 
and  doing  nothing  which  the  law  forbids;  or  he  may  take  it 
knowing  it  is  the  trade-mark  of  his  neighbor,  and  intending  and 
desiring  to  injure  his  neighbor  by  so  doing.  But  in  all  these  cases 
it  is  the  same  act  that  is  done,  and  in  all  these  cases  the  injury  to 
the  plaintiff  is  just  the  same.  The  action  of  the  court  must  de- 
pend upon  the  right  of  the  plaintiff,  and  the  injury  done  to  that 
right.  What  the  motive  of  the  defendant  may  be,  the  court  has 
very  imperfect  means  of  knowing.  If  he  was  ignorant  of  the 
plaintiff's  rights  in  the  first  instance,  he  is,  as  soon  as  he  becomes 
acquainted  with  them  and  perseveres  in  infringing  upon  them, 
as  culpable  as  if  he  had  originally  known  them.  I  have  never 
known  any  serious  doubt  entertained  on  this  subject  since  the 
case  of  Millington  v.  Fox." 

In  1877,  a,lso,  the  New  York  Court  of  Appeals  held  that  in- 
tent was  not  necessary,  in  a  case  not  a  technical  trade-mark 
case.^^  The  United  States  trade-mark  statute  was  not  then  in 
a  valid  form  and  was  not  in  force. 

Here,  as  in  other  civil  actions,  the  law  does  not  try  to  pene- 

"  Colman  v.  Crump,  70  N.  Y.  573-  tent  on  the  part  of  the  wrongdoer. 

8-1877.     In   1860,  plaintiffs  adopted  It  is  sufficient  that  the  proprietary 

as    their   trade-mark    a   bull's   head,  right  of  the  party  and  its  actual  in- 

"  Neither  is  it  necessary  to  establish  fringement  is  shown." 
a  guilty  knowledge  or  fraudulent  in- 


614         Intent  to  Defraud  —  Must  It  Be  Proved? 

trate  the  secret  motives  with  which  the  act  is  done.  It  contents 
itself  with  the  conclusion  that  the  party  intended  the  natural 
and  probable  consequences  of  his  acts.'- 

What  is  in  the  mind  of  the  defendant,  what  his  motive  was, 
whether  he  actually  intended  what  he  accomplished,  is  always 
a  hard  question  and  sometimes  one  that  cannot  be  answered. 
Lord  Cairns  rightly  says  there  is  no  difference  between  the  guilt 
of  him  who  first  acted  in  ignorance  of  plaintiff's  rights  and  later, 
on  learning  of  them,  continued  his  reprehensible  conduct,  and 
he  who  set  out  from  the  start  to  injure  the  plaintiff's  business. 
The  real  question  is  not  of  intent  so  much  as  it  is  of  rights  — 
the  extent  of  the  rights  of  each  party  to  the  name  in  question. 
The  opinion  in  Singer  Machine  Manufacturers  v.  Wilson  Machine 
Manufacturers,^^  cites  Welch  v.  Knott,^'^  where  it  was  said  that 
*'the  defendant  would  not  be  entitled  to  use  the  plaintiffs'  bottles 
in  such  a  manner  as,  in  fact,  to  mislead  the  public,  although  there 
might  be  no  intention  on  his  part  to  mislead."  This  doctrine 
was  again  enunciated  in  England,  in  1899,  in  Cellular  Clothing 
Co.  V.  Maxton  &  Murray, ^^  where  the  question  whether  or  not 
fraudulent  intent  was  necessary  to  a  good  cause  of  action  on  the 
ground  of  unfair  competition,  was  discussed.  The  court  held, 
citing  Millington  v.  Fox,  that  fraudulent  intent  was  not  necessary 
to  constitute  a  right  to  claim  protection  against  the  unlawful 
use  of  words.  "The  only  observation  that  I  wish  to  make  upon 
that  part  of  the  argument,"  said  the  court,  ''is  that  it  seemed  to 
be  assumed  that  a  fraudulent  intention  is  necessary  on  the  part 
of  the  person  who  was  using  the  name  in  selling  goods  in  such 
a  way  as  to  lead  people  to  believe  that  they  were  the  goods  of 
another  person.  That  seems  to  me  to  be  inconsistent  with  a 
decision  given  something  like  sixty  years  ago  by  Lord  Cotten- 
ham  in  Millington  v.  Fox,^^  who  goes  out  of  his  way  to  say  very 
emphatically  that  that  is  not  at  all  necessary  in  order  to  con- 
stitute a  right  to  claim  protection  against  the  unlawful  use  of 
words  or  things  —  I  say  things,  because  it  is  to  be  observed  that 
not  only  words  but  things,  such  as  the  nature  of  the  wrapper, 
the  mode  in  which  the  goods  are  made  up,  and  so  on,  may  go  to 
make  up  a  false  representation;  but  it  is  not  necessary  to  estab- 

»2  McCann  v.  Anthony,  21  Mo.  App.  >*  4  K.  &  J.  747-51-1857. 

83-1886.  16  (1899)  App.  Cas.  326. 

"  3  App.  Cas.  376-1877.  i«  3  Myl.  &  Cr.  338-1838. 


OUMMARY   OF   EnGLISH    RuLE    AS    TO    pROOF   OF    InTEXT      G15 

lish  fraudulent  intent  in  order  to  claim  the  intervention  of  the 
court."  16- 

§  350.  Summary  of  English  Rule  as  to  Proof  of  Intent. — - 

The  English  rule  is  summarized  by  Mr.  Cutler  ^^  thus:  ''It  is 
not  necessary  that  the  person  charged  with  passing  off  should 
be  proved  to  have  intended  to  pass  off  his  goods  as  those  of  the 
plaintiff.  The  question  is,  what  is  the  commercial  effect  of  what  he 
is  doing?  If  the  effect  would  be  to  pass  off  his  goods  as  those  of 
the  plaintiff,  then  his  honesty  of  purpose  or  the  absence  of  any 
intention  to  deceive  is  no  defense."  And  Lord  Halsbury  states 
it  thus:  "Where  one  comes  to  see  where  the  real  question  is,  it  is 
in  a  single  sentence.  Whether  the  one  name  is  so  nearly  resem- 
bling the  name  of  another  as  to  be  calculated  to  deceive?  *  *  * 
That  is  the  very  question  your  Lordships  have  to  decide.  *  *  * 
In  the  result  it  is  perfectly  immaterial  to  my  mind,  for  the  pur- 
pose of  the  decision  of  this  case,  whether  they  were  fraudulent 
or  not,  *  *  *  it  is  perfectly  immaterial  whether  they  in- 
tended it  or  not."  ^^ 

§  351.  American  Cases  as  to  Necessity  of  Proof  of  Intent. — 
The  state  courts  of  the  United  States  are  far  from  unanimous 
on  this  question.  Many  follow  the  rule  of  the  English  cases,  just 
considered,  while  others  uphold  the  stand  taken  by  the  United 
States  Supreme  Court.  Holmes,  Booth  &  Hay  dens  v.  Holmes, 
Booth  &  Atwood  Mfg.  Co.,^^  has  been  referred  to:  Pratt's  Appeal,-'^ 
a  well-considered  case,  follows  the  English  rule. 

""  This  section  as  it  appeared  in  the  court  said  in  its  opinion:  "I  have  care- 
First  Edition  of  this  book  cited  in  fully  examined  the  testimony  upon 
Kansas  Milling  Co.  v.  Kansas  Flour  this  point,  and  can  discover  no  ev- 
Mills  Co.,  89  Kansas,  855-1913;  133  idence  of  fraud  or  bad  faith  in  the  use 
Pac.  Rep.  542.  of  the  trade-mark,"  and  a  perpetual 

""Passing  Off,"   by  John  Cutler,  injunction  was  granted.     On  appeal 

Lond.,  1907,  pp.  5,  6.  the  court  says:   "If  the  defendant's 

^^  North  Cheshire,  etc.,  Brewery  Co.  print  is  an  imitation  of  that  of  the 

V.    Manchester    Brewery    Co.    (1899),  plaintiffs,  if  it  is  calculated  to  deceive 

App.  Cas.  83-85-87.  and  mislead,  the  motive  of  the  de- 

18  37  Conn.  278-1870.  fendant  in  adopting  it  is  not  material 

20117   Pa.    St.   401-1888;    11    Atl.  so  far  as  the  law  of  the  case  is  con- 

878.    The  Master  found  in  his  report  cerned,  however  much  it  might  affect 

that  the  defendant  did  not  intend  to  it  in  a  moral  point  of  view.     The 

perpetrate  an  actual  fraud  in  adopting  protection   which   equity   extends   in 

the  plaintiff's  mark,  which  had  been  in  such  cases  is  for  the  benefit  of  the 

use  for  seventy  years;  and  the  lower  manufacturer,  and  to  secure  to  him 


616 


Intent  to  Defraud  —  Must  It  Be  Proved? 


In  Wirtz  v.  Eagle  Bottling  Co.,"^^  the  defense  was  set  up  that 
no  attempt  or  intent  to  imitate  plaintiff's  labels  was  made  by 


the  fruits  of  his  reputation,  skill,  and 
industry.  The  protection  of  the  pub- 
lic is  another  consideration  and  one 
that  does  not  usually  enter  into  such 
cases"  (p.  410),  Cited  in  Eckhart 
V.  Consolidated  Milling  Co.,  72  111. 
App.  70-1897,  at  p.  72. 

"The  motives  of  the  persons  at- 
tempting the  wrongful  appropriation 
are  not  material.  They  neither  ag- 
gravate or  extenuate  the  injury  caused 
by  such  appropriation.  The  act  is  an 
illegal  one  and  must,  if  necessary,  be 
presumed  to  have  been  done  with  an 
intent  to  cause  the  results  which 
naturally  flow  from  it.  Nor  will  a 
court  of  equity  refuse  to  enjoin  the 
wrongful  appropriation  of  a  corporate 
name  until  the  right  of  the  first  corpo- 
ration to  the  name  has  been  estab- 
lished by  the  verdict  of  a  jury  in  an 
action  at  law."  Newby  v.  Oregon 
Central  Ry.  Co.,  Fed.  Cas.  No.  10,144- 
1869,  at  p.  40;  1  Deady  609.  ,  This 
case  arose  on  petition  to  enjoin  the 
Oregon  Central  Railway  from  using 
its  name.  Eckhart  v.  Consolidated 
Milling  Co.,  72  111.  App.  70-1897. 
The  names  in  question  were  the 
flour  brands  "  Christian's  Superlative," 
"  Petti t,  Christian  &  Company  Su- 
perlative," and  "Ceresota."  The  de- 
fendants had  put  up  flour  in  bags  of 
plaintiff  bearing  these  brands.  Held, 
"It  is  not  necessary  to  show  that  the 
defendant  acted  with  fraudulent  in- 
tention" (at  p.  72).  Citing  PratVs 
Appeal,  117  Pa.  St.  401-1888;  11  Atl. 
878;  Holmes,  Booth  &  Hay  den  v. 
Holmes,  Booth  &  Atwood  Mfg.  Co.,  37 
Conn.  278-1870;  Filley  v.  Fassett,  44 
Mo.  168-1869;  Blackwell  v.  Wright,  73 
N.  C.  310-1875;  Davis  v.  Kendall,  2 
R.  I.  566-1850;  Coffeen  v.  Brunton, 


5  McLean,  256-1851;  Fed.  Cas.  No. 
2,947.  In  the  last  mentioned  case 
it  is  said  that,  "Where  the  same  mark  ' 
or  label  is  used,  which  recommends  the 
article  to  the  public  by  the  established 
reputation  of  another  who  sells  a  simi- 
lar article,  and  the  spurious  article  can- 
not be  distinguished  from  the  genuine 
one,  an  injunction  will  be  granted,  al- 
though there  is  no  intentional  fraud. 
And  I  am  inclined  to  think  that  this  is 
a  correct  view  of  the  principle,  for  the 
injury  will  be  neither  greater  nor  less 
by  the  knowledge  to  the  party"  (p. 
1185). 

"  Wirz  v.  Eagle  Bottling  Co.,  50  N.  J. 
Eq.  164-67-1892;  24  Atl.  658.  Wirtz 
bottled  beer  and  sold  it  at  wholesale. 
He  invented  three  labels  which  he  put 
upon  his  goods.  The  defendant  imi- 
tated plaintiff's  labels.  This  case  is 
particularly  interesting  on  the  question 
of  intent.  The  defendant  was  formerly 
in  the  employ  of  the  plaintiff.  He  saw 
the  preparing  of  the  plaintiff's  labels 
and  alleged  there  was  no  attempt  or  in- 
tent on  his  part  to  imitate  these 
labels.  "The  law,  in  civil  cases,  does 
not  attempt  to  penetrate  the  secret 
motive  which  induced  the  act  brought 
in  judgment,  but  judges  of  its  legal 
quality  solely  by  the  consequences 
which  have  actually  and  necessarily 
proceeded  from  it.  It  is  no  less  a 
dictate  of  justice,  than  of  sound  reason, 
that  every  person  must  be  understood 
to  have  intended  to  do  just  what  is  the 
natural  consequence  of  his  act  de- 
liberately done."  The  aggrieved  per- 
son, in  cases  of  this  class,  is  not  re- 
quired to  show  intentional  fraud,  but 
he  makes  a  sufficient  case  to  give  him  a 
right  to  protection  when  he  shows  that 
the  defendant  is  using  his  label,  or  one 


American  Cases  as  to  Necessity  of  Proof  of  Intent    617 

defendant;  but  it  was  held  that  this  fact  constituted  no  defense. 
"The  vital  question,"  said  the  court,  "in  cases  of  this  kind  is 
not  what  did  the  defendant  mean,  but  what  has  he  done?  The 
legal  quahty  of  an  act,  resulting  in  injury,  must  be  decided,  not 
by  the  motive  with  which  it  was  done,  but  by  the  consequences 
which  have  necessarily  resulted  from  it." 

The  oldest  of  the  foregoing  cases  are  founded,  not  on  special 
provisions  of  statute,  but  on  general  equitable  principles  laid 
down  in  the  rough,  in  cases  that  preceded  any  trade-mark  stat- 
utes in  England  or  America.  These  are  general  principles  and 
apply  to  all  cases,  whether  of  statutory  infringement  or  of  unfair 
competition  as  that  term  is  generally  understood;  and  we  be- 
lieve further,  that  the  cases  which,  long  before  the  statutes,  held 
that  intent  need  not  be  proven  or  even  presumed  to  warrant  a 
court  in  stopping  fraud,  deceit,  and  injury,  will  ultimately  be 
recognized  as  stating  the  correct  rule. 

In  1877,  the  Supreme  Court  first  laid  down  the  rule  that  in- 
tent must  be  proven  to  obtain  an  injunction  against  unfair  com- 
petition. In  McLean  v.  Fleming,^^  Clifford,  J.,  wrote:  "Positive 
proof  of  fraudulent  intent  is  not  required  where  the  proof  of  in- 
fringement is  clear,  as  the  liability  of  the  infringer  arises  from 
the  fact  that  he  is  able,  through  .the  unwarranted  use  of  the 
trade-mark,  to  sell  a  simulated  article  as  and  for  the  one  which  is 
genuine.  Nor  is  it  necessary  in  order  to  give  a  right  to  an  in- 
junction that  a  specific  trade-mark  should  be  infringed;  but  it  is 
sufficient  that  the  court  is  satisfied  that  there  was  an  intent  on 
the  part  of  the  respondent  to  palm  off  his  goods  as  the  goods 
of  the  complainant,  and  that  he  persists  in  doing  so  after 
being  requested  to  desist"  (p.  254.  Citing  Woollam  v. 
Ratcliff).''' 

This  case  was  decided  in  1877,  with  the  Act  of  1870  in  force. 
The  opinion  opens  with  a  reference  to  it.    But  this  act  was  de- 

so  nearly  like  it  as  to  render  deception  resemblance  between  the  two  labels 

of  public  and  injury  to  himself  prob-  is  such  that  it  is  probable,  in  the  sale  of 

able  (citing  Miller  Tobacco  Manufac-  the  goods  of  the  parties,  that  one  will 

tory  v.  Commerce,  45  N.  J.  L.  18-1883).  be  mistaken  for  the  other,  enough  is 

"Neither  is  he  required  to  prove  that  shown  to  make  it  the  duty  of  the  court 

persons  have  actually  been  deceived,  to  interfere"  (id.  pp.  167-8). 
and  that  his  adversary's  goods  have  ^^  McLean  v.  Fleming,  96  U.  S.  245- 

been  purchased  under  the  belief  that  54-1877;  24  L.  ed.  828. 
they  were  his.    If  it  appears  that  the  -^  1  Hem.  &  M.  259-1863. 


618         Intent  to  Defraud  —  Must  It  Be  Proved? 

clared  unconstitutional  by  the  Trade-mark  Cases. ^''  It  was  not 
until  1881  that  a  valid  act  was  passed.  What  influence  the 
statute  had  on  this  decision  it  is  not  possible  to  discover.  It 
is  somewhat  remarkable  that  in  so  important  a  case  as  this  the 
court  should  overlook  the  cases  just  referred  to  which  seem  to 
speak  so  distinctly  the  other  way.  It  would  seem  that  had  these 
cases  been  fully  considered,  some  clear  evidence  of  that  consid- 
eration would  appear  in  the  opinion. 

Following  McLean  v.  Fleming,  in  1890  the  court  decided  Law- 
rence Mfg.  Co.  V.  Tennessee  Mfg.  Co.,-'^  which  stands  distinctly 
for  the  necessity  of  proving  intent.  ''Undoubtedly  an  unfair 
and  fraudulent  competition  against  the  business  of  the  plaintiff, 
conducted  with  the  intent  on  the  part  of  the  defendant  to  avail 
itself  of  the  reputation  of  the  plaintiff  to  palm  off  its  goods  as 
plaintiff's,  would,  in  a  proper  case,  constitute  ground  for  relief" 
(p.  549).  This  statement  is  founded  on  Putnam  Nail  Co.  v. 
Bennett;  ^^  New  York  &  R.  Cement  Co.  v.  Coplay  Cement  Co.;  ^^ 
Wotherspoon  v.  Currie;  ^^  Thompson  v.  Montgomery. "^^  The  court 
then  added  (p.  551),  "but  the  deceitful  representation  or  per- 
fidious dealing  must  be  made  out,  or  be  clearly  inferable  from  the 
circumstances." 

In  1900,  Elgin  National  Watch  Co.  v.  Illinois  Watch  Co.^^  was 
decided.  It  held  that  "if  a  plaintiff  has  the  absolute  right  to  the 
use  of  a  particular  word  or  words  as  a  trade-mark,  then  if  an  in- 
fringement is  shown,  the  wrongful  or  fraudulent  intent  is  pre- 
sumed, and  although  allowed  to  be  rebutted  in  exemption  of 
damages,  the  further  violation  of  the  right  of  property  will  never- 
theless be  restrained.  But  where  an  alleged  trade-mark  is  not 
in  itself  a  good  trade-mark  yet  the  use  of  the  word  has  come  to 
denote  the  particular  manufacturer  or  vendor,  relief  against  un- 
fair competition  or  perfidious  dealing  will  be  awarded  by  requiring 
the  use  of  the  word  by  another  to  be  confined  to  its  primary  sense 
by  such  limitations  as  will  prevent  misapprehension  on  the  ques- 
tion of  origin.  In  the  latter  class  of  cases,  such  circumstances 
must  be  made  out  as  will  show  wrongful  intent  in  fact,  or  justify 

2"  100  U.  S.  82;  25  L.  ed.  550.  ^^  5  l.  R.  H.  L.  Cas.  508-1872. 

=M38  U.  S.  537-1890;  34  L.  ed.  2*  41  Ch.  Div.  35-1889. 

997;  11  Sup.  Ct.  396.  ^o  179  u.  S.  665-74;  44  L.  ed.  365; 

M43  Fed.  800-1890.  21  Sup.  Ct.  270. 
"  44  Fed.  277-1890;  10  L.  R.  A.  833. 


American  Cases  as  to  Necessity  of  Proof  of  Intent    619 


that  interference  from  the  inevitable  consequences  of  the  act 
complained  of." 

Various  state  and  federal  courts  have  adopted  a  similar  rule 
on  the  strength  of  these  cases. ^^ 


^^  Day  V.  Webster,  23  App.  Div. 
(N.  Y.)  601-1897;  49  N.  Y.  Supp. 
314.  There  was  no  question  of  tech- 
nical trade-marks  here.  Plaintiffs 
rested  upon  the  introduction  of  the 
respective  labels.  They  offered  no 
scintilla  of  evidence  tending  other- 
wise to  show  that  confusion  had 
arisen  from  the  two  labels.  Court 
held  labels  would  not  confuse  and 
refused  to  enjoin  and  that  fraud  was 
essence  of  action  for  unfair  competition. 

Goodman  v.  Bohls,  3  Tex.  Civ.  App. 
183-88-1893;  22  S.  W.  11.  "And  if 
you  further  believe  that  *  *  * 
Goodman  placed  on  the  market  in 
said  county  of  El  Paso,  and  sold  in  said 
market  *  *  *  packages  bearing 
such  a  resemblance  to  said  package  of 
the  plaintiff  as  would  deceive  the  pur- 
chaser using  such  ordinary  care  as 
the  purchasers  would  exercise  ordi- 
narily in  purchasing  such  goods;  and 
if  you  further  believe  that  defend- 
ant used  such  mode  and  manner  of 
packing  said  tobacco  with  the  design 
to  sell  the  same  in  the  said  market 
as  the  tobacco  of  the  plaintiff  and 
thus  secure  a  sale  of  his  tobacco  which 
except  for  such  resemblance  to  plain- 
tiff's packages  he  would  not  have, 
then  you  will  find  a  verdict  for  the 
plaintiff.  *  *  *  if  the  defendant's 
packages  in  shape,  color,  material  of 
packages,  size,  marks,  and  devices 
should  so  far  resemble  those  of  the 
plaintiff's  as  would  be  apt  to  mis- 
lead the  class  of  customers  generally 
to  whom  the  same  is  sold  in  said 
market,  it  is  such  resemblance  as 
above  referred  to."  This  charge  up- 
held on  appeal. 


N.  K.  Fairbank  Co.  v.  Windsor, 
61  C.  C.  A.  233-1903;  124  Fed.  200- 
35  (C.  C.  A.  2d  Cir.).  In  unfair  com- 
petition cases  "there  can  be  no  recov- 
ery unless  the  court  is  satisfied  that 
there  has  been  an  intent  on  the  part 
of  defendants  to  palm  off  their  goods 
as  plaintiff's.  In  many  of  these  un- 
fair competition  cases  the  fraudulent 
intent  is  inferred  from  the  facts, 
sometimes  against  the  sworn  protes- 
tations of  the  infringer  that  he  was 
trying  to  differentiate  his  packages 
from  those  of  the  complainant  not 
to  simulate  them.  But  in  all  cases 
where  there  has  been  a  recovery,  in- 
tentional fraud  has  been  found." 

Von  Faber  v.  Faber,  124  Fed.  603- 
1903  (C.  C.  S.  D.  N.  Y.).  Decision 
by  Ray,  district  judge.  "Actions  to 
restrain  unfair  competition  in  trade, 
it  is  said,  are  based  essentially  upon 
fraud.  That  fraud  must  be  proved. 
It  cannot  be  inferred  from  unim- 
portant similarities  not  calculated  to 
mislead  the  purchaser.  {Kipling  v. 
G.  P.  Putnam's  Sons,  120  Fed.  631; 
65  L.  R.  A.  873)"  (at  p.  609).  The 
court  cites  Lawrence  Mfg.  Co.  v.  Ten- 
nessee Mfg  Co.,  138  U.  S.  537-1890; 
34  L.  ed.  997;  11  Sup.  Ct.  396. 

Lamont,  Corliss  &  Co.  v.  Hershey, 
140  Fed.  763-4-1905  (Cir.  Ct.  N.  D. 
Pa.).  Preliminary  injunction  denied 
where  defendant  sold  chocolate  in 
packages  somewhat  similar  to  com- 
plainant's in  size,  shape,  color,  etc., 
the  words  and  decoration  on  the 
wrappers  being  entirely  different. 
"To  make  out  a  case  of  unfair  and 
fraudulent  competition,  —  an  effort, 
in   other   words,    to   steal   the   trade 


620         Intent  to  Defraud  —  Must  It  Be  Proved? 

From  the  foregoing  it  will  be  seen  that  our  Supreme  Court  had 
departed  considerably  from  the  English  rule  that  the  question 
for  the  court  is  not  the  defendant's  intent  but  the  commercial 
effect  of  what  he  has  done.  The  attitude  of  the  Supreme  Court 
is  not  shared  by  all  other  American  courts.  The  New  York 
Court  of  Appeals  follows  the  English  rule,  its  position  being  based 
on  Vnlcn?!  v.  Myers  ^^"  and  Colmnn  v.  Crump.  -^^^ 

§  352.  First  User  of  a  Mark,  Rights  of,  Arising  out  of  Priority. 
—  A  trader  adopts  a  name  or  brand  which  he  supposes  is  used 
by  no  one  except  himself.  It  turns  out  later  that  it  had  been  in 
use  by  another,  prior  to  his  adoption  of  it,  and  that  his  continuing 
to  use  it  will  result  in  injury  to  this  first  user.  It  has  been  often 
held  that,  in  such  a  situation,  the  rights  are  all  with  the  first  user, 
and  it  is  the  duty  of  the  one  who  later  adopts  the  name  to  distin- 
guish his  use  of  it.^^  To  use  the  words  of  Judge  Holmes  in  the 
Waltham  case:  "The  plaintiff  merely  on  the  strength  of  having 
been  first  in  the  field,  may  put  later  comers  to  the  trouble  of  tak- 
ing such  reasonable  precautions  as  are  commercially  practicable 
to  prevent  their  lawful  names  and  advertisements  from  deceit- 
fully diverting  of  plaintiff's  custom."  ^^  This  being  so,  if  this 
"later  comer"  persists  in  using  the  name  or  threatens  to  do  so, 
the  court  is  justified  in  assuming  he  does  so  with  fraudulent  in- 
tent. Such  continued  action  on  his  part  will  raise  a  presumption 
of  fraudulent  and  deceitful  intent  or  purpose  to  pass  off  his  busi- 

built  up  by  another,  —  there  must  be  ^i"  58  Hun,  161. 
an  actual  wrongful  intent  to  deceive  ^i^  70  N.  Y.  573-1877. 
the   public   into   the  belief   that   the  This  section  is  cited  in  Kansas  Mill- 
goods  of  the  one  party  are  the  goods  ing  Co.  v.  Kansas  Flour  Mills  Co.,  89 
of   the  other,   accompanied  by  such  Kansas,  855-1913,  133  Pac.  542. 
acts  and  devices  as  are  likely  to  do  ^'^  Arnerican  Waltham  Watch  Co.  v. 
so,  or  such  duplication  in  form  and  United  States  Watch  Co.,   173  Mass. 
dress  of  the  one  by  the  other  as  will  85-1899;  53  N.  E.  141;  43  L.  R.  A. 
produce    a    confusion    calculated    to  826;  New  England  Aid  &  Needle  Co. 
bring  this  about,  of  which  the  party  v.   Marlboroiujh   Aiol   &   Needle   Co., 
complained    against    is    convicted    of  168  Mass.   154-1897;  46  N.  E.  386; 
being   willing   to   have   the   benefit."  McAiidrew  v.  Bassett,  4  De  G.  J.  &  S. 
Paul  on  Trade-Marks   (p.  381):  "It  380-1864. 

(Equity)  will  not  enjoin  the  imitation  '^  American  Waltham  Watch  Co.  v. 

of  labels,  bill  heads,  and  commercial  United  States   Watch  Co.,   173  Mass. 

names  of  a  rival  trade  unless  such  in-  85-1899;  Nesne  v.  Sundet,  93  Minn, 

tontions  are  fraudulently  designed,  and  299;  101  N.  W.  490-1904. 
have  a  tendency  to  occasion  damage." 


First  User  of  a  Mark 


621 


ness  as  that  of  the  original  user.^^  This  does  not  mean  that  it 
must  always  be  proven  that  the  defendant  had  in  his  secret  mind 
the  distinct  intent  and  purpose  to  defraud  the  plaintiff.  "The 
law  does  not  attempt  to  penetrate  the  secret  motives  or  intent 
with  which  the  act  is  done,  but  contents  itself  with  the  conclusion 
that  the  party  intended  the  natural  and  probable  consequences 
of  the  act."^'^    The  geographic  locality  of  the  plaintiff  and  de- 


3«  Turton  v.  Turton,  42  Ch.  Div. 
128-41-1899.  "No  man  must  pass 
off  his  goods  as  the  goods  of  another. 
That  is  the  principle  upon  which  it 
goes.  Of  course,  that  may  be  done 
unintentionally,  but  where  there  is 
a  manifest  and  natural  meaning  in 
the  words  used,  that  the  goods  are 
the  goods  of  somebody  else,  and  the 
man  who  uses  these  terms  uses  not 
his  name  only,  but  somebody  else's, 
he  would  be  stopped  from  doing  so 
as  soon  as  he  is  aware  of  the  facts 
which  make  the  prima  facie  inten- 
tion and  result  of  which  he  is  doing, 
passing  off  his  goods  as  goods  of  some- 
body else.  It  was  formerly  said  that 
no  action  could  be  maintained  unless  a 
man  has  done  so  fraudulently  and 
intentionally,  but  when  he  finds  out 
that  the  natural  construction  of  what 
he  is  doing,  when  the  facts  are  known, 
is  to  represent  his  goods  to  be  some- 
body else's,  then  he  would  be  stopped, 
even  though  he  had  originally  done 
that  unintentionally,  and  inno- 
cently." 

Meldrum  v.  Shubert,  2  111.  Cir.  Ct. 
Rep.  293-1904.  Complainant  leased 
and  had  for  one  season  conducted  a 
small  theatre,  chiefly  patronized  by 
residents  of  the  vicinity,  under  the 
name  of  the  "Garrick"  theatre.  De- 
fendants then  leased  a  large  metro- 
politan theatre,  formerly  known  as 
the  "Dearborn"  theatre,  and  called 
it  the  "Garrick"  theatre.  Prior  to 
complainant's   use  of  the   name  de- 


fendants had  announced  the  intention 
to  use  this  name;  this  was,  however, 
not  known  to  complainant;  and  de- 
fendants made  no  actual  use  of  the 
name  until  complainant's  first  season 
was  over.  Held,  that  defendants 
should  be  enjoined  from  using  the 
name,  and  that  it  was  not  necessary 
to  support  an  injunction  that  it  should 
be  shown  that  pecuniary  loss  would 
result  to  complainant  from  defend- 
ant's acts. 

35  McCann  v.  Anthony,  21  Mo.  App. 
83-90-1886. 

See  also  Ball  v.  Siegel,  116  111. 
137-1886;  4  N.  E.  667;  Elgin  Butter 
Co.  V.  Elgin  Creamery  Co.,  155  111. 
127-1895;  40  N.  E.  616;  Allegretti  v. 
Allegretti  Chocolate  Cream  Co.,  177 
111.  129-1898;  52  N.  E.  487;  Int.  Com. 
Y.  W.C.A.  V.  Y.  W.C.A.  of  Chicago, 
194  III.  194-1902;  62  N.  E.  551. 

Investor  Pub.  Co.  v.  Dobinson, 
72  Fed.  603-1896  (C.  C.  S.  D.  Cal.); 
Guardian  Fire  &  Life  Assur.  Co.  v. 
Guardian  &  Gen.  Ins.  Co.,  50  L.  J. 
Ch.  N.  S.  253-1880;  Lee  v.  Haley, 
L.  R.  5  Ch.  App.  Cas.  155-1869; 
Knott  V.  Morgan,  2  Keene,  213-1836; 
U.  S.  Mercantile  Reporting  Co.  v. 
U.  S.  Mercantile  Rep.  &  Collecting 
Assn.,  21  Abb.  N.  C.  (N.  Y.)  115- 
1888;  Matsell  v.  Flanagan,  2  Abb. 
Pr.  N.  S.  (N.  Y.)  459-1867;  Lamb 
Knit  Goods  Co.  v.  Lamb  Glove  &  Mit- 
ten Co.,  120  Mich.  159-1899;  78  N.  W. 
1072;  44  L.  R.  A.  841;  Sanders  v. 
Jacob,  20  Mo.  App.  96-1885;  Newby  v. 


622         Intent  to  Defraud  —  Must  It  Be  Proved? 

fendant  often  has  an  important  bearing  on  the  question  as  to 
right  obtained  by  priority  of  use. 

§  353.  Denial  of  Intent  Will  Not  Avail  Defendant.  —  The  de- 
nial of  intent  to  injure  will  not  avail  a  defendant.  Under  proper 
circumstances  the  court  will  find  in  his  acts  evidence  of  an  intent 
to  defraud  even  in  the  face  of  his  most  explicit  denial  that  he  ever 
intended  to  pass  ofT  his  goods  as  those  of  the  complainant.  "And 
such  intent  may  be,  and  often  is,  made  out,  not  from  direct  tes- 
timony, but  as  a  clear  inference  from  all  the  circumstances,  even 
when  the  defendant  protests  that  his  intention  was  innocent. "^^ 
The  respondent  in  Wotherspoon  v.  Currie  ^^  said  (see  p.  515) : 
"  There  is  no  reason  in  the  world  why  I  should  take  the  name,  be- 
cause I  manufacture  something  superior,  and  at  a  cheaper  price, 
therefore,  why  should  I  take  the  name  of  the  plaintiffs?"  The 
comment  of  the  Lord  Chancellor  on  this  plea  was  this:  ''Well, 
then,  one  naturally  asks,  why  should  he  do  anything  to  lead  people 
to  suppose  that  his  name  is  to  be  in  any  way  associated  with  Glen- 
field,  or  this  inferior  article  (as  he  says)  with  his."  The  court  in 
Keller  v.  Goodrich  Co.,^^  citing  this  passage  said:  "So  may  we  ask 
here,  why  should  the  appellant,  doing  business  in  Fort  Wayne, 
Indiana,  do  anything  to  associate  his  name  with  Akron,  in  the 
State  of  Ohio?  The  natural  presumption  is  that  he  expected  to 
derive  benefit  from  it,  and  secure  buyers  from  among  those  who 
had  bought  and  used  the  Akron  dental  rubber.  If  we  may  as- 
sume, as  we  justly  may,  that  he  intended  to  mislead,  and  not  in 
good  faith  to  convey  information,  we  must  carry  this  assumption 
to  its  logical  consequences,  and  assert  that  his  act  was  likely  to 
accomplish  what  he  intended  it  should." 

Not  only  will  fraudulent  intent  be  presumed  in  the  face  of  the 
defendant's  specific  disclaimer  of  such  intent,  but  it  will  be  pre- 
sumed in  the  face  also  of  contract  provisions,  which  would  tend 
to  show  proper  motives,  when  the  court  is  satisfied  that  it  was 

Oregon  Central  Ry.,  Deady  (U.  S.  D.  ^e  ,v.  A'.  Fairbank  Co.  v.  R.  W.  Bell 

Oreg.),  609-1869.  Mfg.  Co.,  77  Fed.  869-1896,  at  p.  870 

Fxdler    v.    Huff,    104    Fed.    141-  (C.  C.  A.  2d  Cir.).    Above  statement 

1900    (C.    C.    A.);    51     L.     R.     A.  approved,  Hartzler  \.  Goshen  Co.,  lOi 

332;    Orr   v.  Johnston,   13  Ch.    Div.  N.  E.  Rep.  34. 

434.  "  L.  R.  5  Eng.  &  Ir.  App.  508-1872. 

Payton    &    Co.    v.    Snelling,   Lam-  ^s  117  ind.  556-60-1888;  19  N.  E. 

pard   &   Co.    (1901),   App.   Cas.   308  196. 
(House  of  Lords). 


Action  Based  on  Injury  to  Plaintiff  623 

not  intended  by  the  parties  that  these  provisions  should  be  car- 
ried out.  In  R.  Heinisch's  Sons'  Co.  v.  Boker,^^  various  contracts 
were  made  by  parties  to  the  action  as  to  the  use  of  name  "Hein- 
isch."  It  appeared  that,  while  the  ostensible  objects  of  the  con- 
tracts were  not  carried  out,  the  Heinisch  name  had  been  so  used 
as  to  deceive  the  public.  Held:  ''In  these  circumstances,  it  must 
be  presumed  that  the  defendants  contemplated  the  natural  con- 
sequences of  their  acts,  irrespective  of  those  carefully  worded 
provisions  of  said  contract  which  apparently  were  never  intended 
to  have  any  effect." 

§  354.  The  Action  for  Unfair  Competition  is  Based  on  Injury 
to  the  Plaintiff,  not  on  the  Intent  of  the  Defendant  to  injure  the 
Plaintiff.  —  Assuming  that  up  to  the  time  an  injunction  is  asked 
the  defendant  has  acted  with  entire  good  faith,  firmly  believing 
that  he  was  causing  no  injury  to  the  plaintiff  and  usurping  none  of 
his  rights,  still  he  will  be  enjoined.  His  opinion  as  to  the  result 
to  the  plaintiff  of  his  act  is  not  the  test,  and  it  should  be  dis- 
regarded by  the  court.  If  the  court  believes  the  necessary  con- 
sequence of  the  defendant's  action  is  deceit  and  this  deceit  may 
or  does  injure  the  plaintiff,  an  injunction  should  issue.  The 
owner  of  an  honest  business  reputation,  or  of  a  valuable  brand  or 
name,  is  entitled  to  protection  as  well  against  persons  who  injure 
him  innocently  as  against  those  who  would  injure  him  inten- 
tionally. In  Cuervo  v.  Landauer,^^  the  defendant  bought  labels 
from  a  dealer  in  such  articles,  and  did  not  know  that  in  using  them 
he  would  interfere  with  the  plaintiff's  business.  Nevertheless 
it  was  held  he  should  be  enjoined.  "That  defendants  did  not 
know  that  the  labels  which  they  bought,  as  they  aver,  from  a 
cigar-box  maker,  were  infringements,  is  no  reason  for  refusing 
the  relief  prayed  for.  The  owner  of  a  trade-mark  is  entitled  to 
protection  against  ignorant  as  well  as  against  maUcious  infringers." 

It  is  well  established  that  the  use  of  a  corporate  name  will 
be  enjoined,  which,  though  adopted  with  perfect  good  faith, 
is  calculated  to  confuse  and  deceive.  Ground  for  such  inter- 
ference is  to  be  found  in  the  detriment  to  the  complainant  which 
cannot  be  otherwise  remedied  or  reached;  and  further,  if  it  is 
shown  that,  although  innocent  of  fraudulent  intent  at  the  out- 
set, on  being  apprised  of  the  injury  he  is  inflicting  on  the  plain- 

'9  86  Fed.  765-69-1898  (C.  C.  S.  « 63  Fed.  1003-1894  (C.  C.  S.  D. 
D.  N.  Y.).  N.  Y.). 


624         Intent  to  Defraud  —  Must  It  Be  Pjioved? 

tiff,  the  defendant  continues  to  use  the  offending  mark  or  name, 
that  fact  will  warrant  a  very  strong  presumption  of  deceitful 
purpose  on  his  part.'^ 

§  355.  Proof  of  Specific  Orders  to  His  Agents  and  Servants 
to  Act  Fairly  Will  Not  Excuse  Defendant.  —  Specific  instruc- 
tions to  salesmen  to  refrain  from  any  statements  or  represen- 
tations that  would  tend  to  mislead  will  not  prevent  this  pre- 
sumption from  arising  where  the  facts  otherwise  justify  it. 
Judge  Lacombe  has  said  in  Enterprise  Mfg.  Co.  v.  Landers,  Frary 
&  Clark, ^~  "It  is  elementary  law  that,  when  the  simulation  of 
well-known  and  distinctive  features  is  so  close,  the  court  will 
assume  that  the  defendants  intended  the  result  they  have  ac- 
complished, and  will  find  an  intent  to  appropriate  the  trade  of 
their  competitor,  even  though  in  their  instructions  to  their  own 
selling  agents  they  may  caution  against  oral  misrepresentations 
as  to  the  manufacture  of  the  goods.  There  is  evidence  to  show 
that  purchasers  have  been  deceived  as  to  the  identity  of  these 
mills,  but,  in  the  case  of  a  Chinese  copy,  such  as  the  defendants 
offer  to  the  pubhc,  such  proof  is  hardly  needed."  ^^ 

§  356.  Actual  Injury  to  Plaintiff  by  Defendant  Must  be  Im- 
minent. —  Although  a  definite  intent  and  plan  on  the  part 
of  the  defendant  to  pass  off  his  goods  as  those  of  the  plaintiff 
and  to  injure  him  m  his  trade  be  clearly  shown,  yet  if  he  never 
provides  himself  with  the  actual  or  probable  means  of  accom- 
plishing such  a  result,  there  is  no  basis  for  a  cause  of  action  on 
the  ground  of  unfair  competition,  and,  in  such  a  case,  no  pre- 
sumption of  intent  to  defraud  will  arise.''* 

^1  Van  Houten  v.  Hoolon  Cocoa  &  "  Dodge   Stationery   Co.    v.    Dodge, 

Chocolate   Co.,    130   Fed.    600-3-1904  145  Cal.  380-90-1904;  78  Pac.  879, 

(C.  C.  N.  J.).     "While  innocent  of  held,    that    it    is    quite    unimportant 

artifice  in  the  beginning,  the  refusal  whether  the  defendant  used  the  name 

of  the  defendants  to  grant  this  con-  Dodge  with  fraudulent  intent  or  not. 

cession,  and  their  insistence  on   the  If  the  necessary  result  was  deception, 

continued  employment  of  that  which  the  fact  that  it  acted  with  an  honest 

is  shown  to  be  objectionable,  and  can  purpose  will  not  aid  it. 

make  no  material  difference  to  them  "They  "never  used  any  means  cal- 

on  any  honest  basis,  may  warrant  a  culated   to   accomplish   it,   and   they 

somewhat  different  conclusion  as  to  adopted    those    admirably    suited    to 

their  present  intention,  which  of  it-  defeat  it.    Their  intention,  therefore, 

self  might  call  for  relief."  becomes  immaterial."    Kann  v.  Dia- 

*'-  131  Fed.  240-1904  (C.  C.  A.  2d  mond   Steel   Co.,    89    Fed.    706-1898, 

Cir  \  at  p.  712  (C.  C.  A.  2d  Cir.) ;  32  C.  C.  A. 


Presumption  not  Based  on  Unimportant  Facts     625 

"  The  intention  alone,  without  the  actual  or  probable  use  of 
means  calculated  Ho  convey  a  false  impression  to  the  public  mind, 
*  *  *  and  to  mislead  and  deceive  the  ordinary  purchaser,' 
furnishes  no  ground  for  relief,  because  an  intent  to  injure,  where 
no  injury  is  or  will  be  inflicted,  causes  no  legal  damages.^^ 

§  357.  Unimportant  Facts  not  a  Basis  of  Presumption  of 
Intent  to  Defraud.  —  Furthermore,  presumption  of  fraud- 
ulent intent  must  be  based  on  facts  which  are  important.  "It 
cannot  be  inferred  from  unimportant  similarities  not  calculated 
to  mislead  the  purchaser."  '^^  As  it  is  similarity  and  not  identity 
that  the  unfair  merchant  seeks,  the  apparently  unimportant 
features  sometimes  become  important.  He  is  presumed  to  know 
and  intend  the  necessary  consequences  of  his  acts,  and  must 
usually  answer  for  the  probable  and  ordinary  consequences  of 
them.^^ 

§  358.  Fraudulent  Intent  May  be  Presumed.  —  Intent  is 
the  state  of  mind  in  which  or  the  purpose  with  which  one  does 
an  act.  Again,  it  is  *'the  character  which  the  law  imputes  to 
an  act,  irrespective  of  the  personal  intention  of  the  actor."  ^^  To 
prove  the  state  of  mind  of  the  defendant  when  the  acts  in  ques- 
tion were  done,  is  difficult  to  say  the  least  —  and  the  question 
practically  narrows  itself  down  in  many  cases  to  this:  What  are 
the  acts  from  which  the  law  will  impute  a  fraudulent  intent  to 
injure  a  rival's  business;  what  are  the  facts  on  which  the  law  will 
found  a  presumption  of  intent  to  defraud?  This  question  is 
important  in  cases  where  no  actual  injury  is  shown:  it  is  of  little 
moment  where  actual  injury  is  proven. 

324;  Hopkins  Trade-Marks,  p.  256;  Cir.);   Kann  v.   Diamond  Steel  Co., 

Centaur  Co.  v.  Marshall,  97  Fed.  785-  89  Fed.  706-1898  (C.  C.  A.  8th  Cir.); 

1899  (C.  C.  A.  8th  Cir.);  38  C.  C.  A.  32  C.  C.  A.  324. 

413;  Postum  Cereal  Co.  v.  American  ^^  Von  Faber  v.  Faber,  124:  Fed.  603- 

Health  Food  Co.,  119  Fed.  848-1902  1903,  p.  609. 

(C.   C.  A.   7th   Cir.);   56  C.   C.   A.  « Every  man,  acting  intelhgently, 

360.  will  be  presumed  to  intend  the  neces- 

"  Wrisley  Co.  v.   Iowa  Soap  Co.,  sary  consequences  of  his  acts.  Holmes, 

122   Fed.   796-1903    (C.    C.   A.    8th  Booth  &  Haydens  v.  Holmes,  Booth 

Cir.);  McLean  v.  Fleming,  96  U.  S.  &  Atioood  Mfg.  Co.,  37  Conn.  278- 

245-1877;   24   L.   ed.   828;   Kann  v.  1870,   at   p.   296.     "The   same    pre- 

Diamond  Steel  Co.,  89  Fed.  706-1898  sumption  applies,  with  less  force  per- 

(C.  C.  A.  8th  Cir.);  32  C.  C.  A.  1324;  haps,  to  the  probable  and  ordinary 

N.  K.  Fairbank  Co.  v.  R.  W.  Bell  Mfg.  consequences." 

Co.,  77  Fed.  869-1896  (C.  C.  A.  2d  '^  Standard  Dictionary,  937. 


626         Intent  to  Defraud  —  Must  It  Be  Proved? 

The  law  will  presume  an  intent  to  defraud  even  when  there  is 
an  utter  lack  of  i)roof  of  personal  intent  to  deceive  on  the  part 
of  the  defendant  or  even  where  it  is  actually  shown  such  an  intent 
did  not,  in  fact,  exist.  The  legal  intent,  which  the  law  bases 
upon  a  person's  acts  and  then  imputes  to  him  personally,  may 
exist  regardless  of  whether  he  actually  intended  to  do  harmful 
acts  or  not.  If,  for  instance  one  does  innocently  acts  which 
are  likely  to  defraud  his  rival,  and  on  learning  their  baleful  effect 
he  continues  them,  the  law  will  not  regard  his  claim  that  his 
personal  intent  was  to  benefit  his  rival  or  not  to  injure  him.  In 
England,  relief  in  actions  for  unfair  competition  is  not  dependent 
upon  actual  fraudulent  intent,  where  the  conduct  of  defendant 
would  be  likely  to  deceive  purchasers  as  to  the  origin  of  the  goods. 
"A  person  is  ordinarily  held  to  intend  the  consequences  of  his 
acts,  when  he  understands  his  acts,  and  they  are  deliberate,  es- 
pecially; and,  if  such  acts  by  a  business  competitor  are  calculated 
to  deceive  the  trade,  the  public,  and  the  user,  and  to  palm  off  the 
goods  or  manufactures  of  such  person  for  those  of  his  competitor, 
and  such  is  the  actual  result,  and  such  person  refuses  to  cease 
such  conduct,  the  legitimate  conclusion  is  that  he  intended  and 
intends  to  cheat  and  defraud  not  only  the  competitor,  but  the 
trade,  the  general  public,  and  the  users  and  consumers.  Such 
acts,  persisted  in,  constitute  fraud."  '^^ 

§  359.  Presumption  of  Fraud  May  Arise  from  Similarity  of 
Name  or  Get-Up.  —  Presumption  of  fraud  may  arise  from  use 
of  similar  names.  The  earlier  stand  taken  by  some  courts  was 
that  no  one  should  be  allowed  to  create  a  monopoly  of  the  use 
of  his  own  name,  to  the  use  of  which  others  who  bear  it  may  be 
equally  entitled.  In  these  cases  the  fact  was  overlooked  that 
the  honest  dealer  desires  a  name  which  can  be  associated  only 
with  his  own  particular  business  house  and  which  cannot  by  any 
chance  be  confused  with  the  name  of  some  other  concern.  It 
may  usually  be  presumed  that  where  a  person  sets  up  a  business 
under  a  name  similar  to  one  already  in  use,  even  though  that 
name  be  his  own,  he  is  not  taking  that  name  because  it  is  neces- 
sary to  take  it,  nor  because  using  it  is  essential  to  his  success, 
but  because  he  hopes  by  the  confusion  resulting  from  using  it  to 
get  for  himself  some  of  the  trade  which  belongs  to  the  established 
concern.  To  wish  to  get  all  of  this  trade  he  can  is  not  condemned 
"  Von  Faber  v.  Fabcr,  124  Fed.  603-10-1903. 


Similarity  of  Name  or  Get-Up  627 

by  the  law,  but  to  try  to  get  it  by  creating  in  any  way  the  idea 
in  the  minds  of  the  pubUc  that  his  concern  is  not  his,  but  the  older 
house,  is  rightly  condemned,  and  here  is  the  gravamen  of  the 
injury  which  is  the  result  of  his  use  of  the  name. 

Where  such  a  state  of  facts  as  this  is  found,  equity  does  not 
wait  for  definite  proof  of  fraud.  Those  who  honestly  desire 
distinctive  reputations  for  their  own  goods,  do  not  strive  to  so 
get  them  up  as  to  be  likely  to  resemble  other  goods  of  a  like 
sort.  They  do  not  start  out  by  adopting  the  most  individual  and 
particular  features  of  the  dress  and  make-up  of  a  rival's  goods. 
Consequently,  when  a  manufacturer  is  found  doing  this,  it  may 
safely  be  presumed  he  has  some  object,  some  definite  purpose  in 
mind.  When  it  is  further  found  he  has  expended  large  sums  in 
advertising  his  own  business  under  names  or  insignia  which 
are  similar  to  those  used  by  a  successful  competitor,  a  similar  deduc- 
tion may  be  made.  Any  facts  which  show  that  a  maker  or  vendor  of 
goods  strives  to  adopt  and  advertise  on  his  own  goods,  or  in  connec- 
tion with  his  own  goods,  distinctive  features  of  the  goods  of  a  rival, 
may  be  made  a  basis  of  a  presumption  of  fraud.  Honest  rivals 
do  not  copy.  Men  ambitious  to  succeed  on  their  own  merits 
do  not  spend  money  to  masquerade  as  some  other  person  and  are 
particular  to  avoid  anything  which  promotes  a  knowledge  of  a 
rival's  goods. 

Intent  is  a  subtle  thing;  it  cannot  be  seen,  and  can  only  be 
identified  by  acts  which  are  seen  and  which  are  prompted  by  it. 
The  statement  of  a  dealer  who  has  copied  the  get-up  of  a  rival's 
goods,  that  he  intends  to  keep  his  goods  as  individual  as  pos- 
sible and  not  to  injure  anyone,  falls  as  valueless  when  a  court 
finds,  by  placing  his  goods  beside  those  of  his  competitor,  that  it 
is  difficult  to  tell  them  apart;  for  it  must  be  presumed  he  in- 
tended to  do  that  which,  if  they  are  to  believe  their  eyes,  he  has 
actually  done.  The  fact  that  the  designer  of  the  offending  mark 
was  an  expert,  or  was  a  man  of  intelligence  and  experience,  will 
be  taken  into  consideration  in  judging  of  the  effects  of  the  acts 
done  by  him.  The  Circuit  Court  of  Appeals,  Second  Circuit, 
has  very  aptly  described  the  effect  of  a  simulation  from  which  in- 
tent will  be  presumed,  in  N.  K,  Fairhank  Co.  v.  R.  W.  Bell  Mfg. 
Co.'"^  "It  may  fairly  be  assumed  that  the  individual  who  de- 
signed defendant's  yellow  and  black  package  was  an  expert, 
6«77  Fed.  SG9-77-1896  (C.  C.  A.  2d  Cir.). 


628         Intent  to  Defraud  —  Must  It  Be  Proved? 

familiar  with  the  trade;  that  the  changes  he  made  in  the  old -pack- 
age were  all  in  the  direction  of  complainant's  package  is  mani- 
fest; that  he  was  intelligent  enough  to  make  such  changes  in  order 
to  accomplish  a  definite  object  will  surely  not  be  disputed;  and 
that  such  object  was  the  production  of  a  package  resembling 
complainant's  is  the  irresistible  inference.  Business  men  of 
ordinary  acuteness,  who  wish  to  establish  a  distinctive  reputa- 
tion for  their  goods  with  the  general  public,  who  seek  to  have 
such  goods  so  arrayed  that  they  will  always  be  unmistakably 
recognized  by  the  public,  certainly  do  not  begin  by  assimilating 
the  elements  of  their  design  to  those  of  some  one  competing  man- 
ufacturer. When  they  are  found  doing  this,  it  must  be  assumed 
that,  for  some  reason  or  other,  they  prefer  to  have  their  goods 
arrayed,  not  in  a  distinctive  dress,  but  in  one  resembling  their 
competitor's;  and,  when  it  appears  that  such  competitor  has  ex- 
pended upward  of  $300,000  in  advertising  his  packages,  that  rea- 
son is  not  hard  to  find.  The  actions  of  defendant's  own  officers 
are  to  our  minds  strong  evidence  that,  in  their  opinion  as  experts, 
their  new  black  and  yellow  package  was  one  likely  to  become 
confused  in  the  minds  of  the  public  with  the  existing  well-known 
package  of  complainant.  Men  act  from  motives,  and,  unless 
the  new  style  of  package  was  devised  for  this  very  purpose,  no 
motive  for  its  creation  is  shown  in  the  record,  or  in  anywise  sug- 
gested. That  it  was  the  result  of  a  fortuitous  aggregation  of  ele- 
ments is  an  hypothesis  which  cannot  for  one  moment  be  enter- 
tained. It  was  designed  by  an  intelligent  creator,  and,  so  far  as 
we  can  see,  for  but  a  single  purpose,  and  that  purpose  a  species  of 
competition  in  trade  which  courts  of  equity  hold  to  be  unfair. 
"We  are  not  left  to  inferences,  however,  to  determine  whether 
that  purpose  has  been  accomplished.  In  many  cases,  where 
simulation  is  plain,  injunctions  have  been  issued  without  proof 
of  specific  instances  of  deception.  Such  evidence,  however,  is 
always  competent,  and  often  illuminative.  In  the  case  at  bar 
there  is  evidence  of  several  instances  where  purchasers  asking 
for  'Gold  Dust'  have  had  defendant's  soap  powder  palmed  off 
on  them,  being  deceived  by  the  general  appearance  of  the  pack- 
age. More  persuasive,  however,  is  the  evidence  of  retail  dealers 
who  buy  from  defendant  and  sell  to  the  consumer.  It  is  the 
testimony  of  experts.  One  of  them,  a  grocer  in  Wilkes-Barre, 
Pa.,  testifies  that  defendant's  salesman,  as  an  inducement  to 


Presumption  of  Fraud  in  Selling  Goods  629 

purchase,  called  his  attention  to  the  similarity  of  the  packages, 
and  the  possibility  of  passing  off  one  for  the  other.  The  sales- 
man contradicts  this  statement,  and  we  give  no  weight  to  it;  but 
the  grocer  further  testifies  that  he  perceived  the  resemblance, 
bought  the  defendant's  soap  powder,  and  has  repeatedly  passed 
it  off  on  customers  who  asked  for  "Gold  Dust."  Another  grocer, 
who  keeps  both  kinds  of  powder,  testified  that  he  has  often  sub- 
stituted one  for  the  other,  since  there  is  more  money  for  him  in 
selling  the  defendant's  at  the  same  retail  price,  as  it  costs  25  per 
cent,  less  at  wholesale;  that,  when  customers  asked  for  ''Gold 
Dust,"  he  would  generally  go  to  the  shelves,  and  hand  them  de- 
fendant's soap  powder;  that  some  customers  were  not  deceived, 
but  that  the  packages  resemble  each  other  so  closely  that  a  dealer 
can  repeatedly,  in  most  cases,  substitute  one  for  the  other;  and 
that  he  has  known  personally  of  many  such  cases  "  (id.  pp.  877-78) . 

§  360.  Presumption  of  Fraud  Arises  from  so  Selling  Goods 
that  Vendees  May  Pass  Them  off  Fraudulently.  —  The  same 
presumptions  which  arise  from  so  marketing  goods  as  to  deceive 
the  person  who  buys  at  retail,  will  arise  from  facts  which  show 
that  the  defendant's  acts  made  it  possible  for  him  who  bought 
the  goods  to  again  sell  them  in  such  a  way  as  to  deceive  the  ul- 
timate purchaser.  ^^ 

That  evidence  of  intent  is  difficult  to  get,  need  not  be  argued. 
The  court  is  forced  to  look  to  small  details  of  the  conduct  of  the 
defendant  oftentimes  to  find  evidence  of  his  real  intent.  North 
imitated  underwear  made  in  a  special  manner  by  Scriven,  —  and 

"  New  England  Awl  &  Needle  Co.  and  defendant  two  years.  Held 
V.  Marlborough  Awl  &  Needle  Co.,  by  Judge  Holmes  that  defendant  con- 
168  Mass.  154-55-1897;  46  N.  E.  tended  he  "did  not  intend  to  deceive 
386.  Plaintiff  used  a  bronze  colored  the  public  by  passing  off  their  goods 
box,  with  brown  label  on  top  and  for  the  plaintiff's,  but  this  must  be 
one  side  with  printed  inscriptions,  taken  pretty  strictly.  They  knew  that 
tied  with  orange  string.  Defend-  they  were  putting  the  power  to  do  so 
ants  used  box  indistinguishable  in  into  the  retail  dealers'  hands.  It 
every  way  except  that  instead  of  the  hardly  can  be  doubted  that  they  con- 
words  "Manufactured  and  warranted  templated  that  the  wholesale  dealer  at 
by  the  New  England  Awl  &  Needle  whose  request  they  put  up  their  awls 
Company,  West  Medway,  Mass.,"  it  in  this  form,  with  full  knowledge  of  the 
bore  the  words  "Manufactured  by  plaintiff's  prior  use,  would  or  might  try 
the  United  States  Awl  &  Needle  Co.,  to  deceive  the  public,  and  whether 
New  York."  Plaintiff  had  used  their  they  did  or  not  is  immaterial." 
box  for  twelve  years  at  time  of  action 


630 


Intent  to  Defraud  —  Must  It  Be  Proved? 


his  salesmen  distinguished  between  "a"  Scriven  drawer,  meaning 
one  made  after  the  pattern  of  Scriven's,  and  "the"  Scriven 
drawer  —  meaning  one  made  by  Scriven  himself.  This  and  col- 
lateral facts  were  held  a  basis  for  a  presumption  of  fraud  by  the 
Circuit  Court  of  Appeals  (4th  Cir.)  in  1904." 

A  further  idea  of  what  a  court  will  consider  sufficient  evidence  of 
intent  may  be  found  in  Bickmore  Gall  Cure  Co.  v.  Karns,  where  the 
use  of  a  name  similar  to  plaintiff's  and  other  acts  of  the  defendant 
were  held  to  warrant  a  presumption  of  fraud. ^^     Here  it  was 


^^  Scriven  v.  North,  134  Fed.  366- 
74-1904;  67  C.  C.  A.  348.  "There 
is  little  direct  testimony  connecting 
the  defendants  or  their  authorized 
agents  with  any  positive  acts.  In 
the  nature  of  things  this  would  be  so, 
for  persons  about  to  engage  in  un- 
lawful or  questionable  undertakings 
are  not  likely  to  proclaim  their  pur- 
poses on  the  house-tops;  but  there  is 
some  testimony  which  tends  to  show 
that  the  defendants  directly,  through 
their  authorized  agent,  endeavored  to 
market  their  goods,  under  the  guise 
of  the  complainants',  and  that  is  the 
testimony  of  Anderson,  who  was  the 
manager  of  their  New  York  branch 
for  several  years  prior  to  January  1, 
1902.  He  says  that  he  kept  a  sample 
of  the  Scriven  drawer  on  the  counter 
in  the  New  York  office;  that  when 
customers  came  in  and  asked  for  an 
elastic  seam  drawer  he  would  sell  them 
defendants';  if  they  asked  for  'The 
Scriven  drawer,'  he  would  show  them 
defendants'  and  sell  it;  and  so  if  they 
asked  for  a  No.  50.  The  following 
questions  and  answers  illustrate  the 
method:  'Then  you  made  a  difference 
between  "a"  Scriven  drawer  and 
"the"  Scriven  drawer,  is  that  it? 
A.  Yes;  when  a  man  asked  for  a 
Scriven  drawer,  I  knew  that  he  wanted 
the  side-seam  drawer,  and  I  showed 
him  ours.  Q.  And  sold  him  yours? 
A.   Yes,  sir.'    And  in  another  answer 


he  says:  'We  had  a  sample  of  the 
Scriven  drawer  on  our  counter,  and  I 
Jiave  said  that  it  was  made  the  same  as 
Scriven's  drawer,  with  the  exception 
of  the  crotch  pieces  in  the  seat.'  The 
inference  seems  to  be  clear  that  this 
sample  of  Scriven's  drawers  was  kept, 
not  for  the  purpose  of  showing  the 
difference  between  the  two,  but  to 
show  the  absolute  identity  between 
them,  so  that  purchasers,  mainly  job- 
bers, who  bought  to  sell  again,  could 
see  that  the  defendants'  were  such  an 
imitation  of  the  Scriven  drawers  that 
they  could  easily  be  sold  again  as 
genuine  Scriven." 

53  Bickmore  Gall  Cure  Co.  v.  Karns, 
134  Fed.  833-1905;  67  C.  C.  A.  439. 
"The  appellant  spent  a  considerable 
sum  in  advertising,  and  had  finally 
succeeded  in  establishing  a  profitable 
trade,  when  the  appellees  attempted 
to  appropriate  the  phraseology  which 
it  had  long  used,  and  so  to  reap  the 
benefit  of  its  efforts  and  expendi- 
tures. They  learned  that  the  law 
would  not  permit  this  to  be  done,  and 
then  they  made  some  changes;  but 
they  were  only  colorable.  The  wrong- 
ful purpose  was  neither  abandoned  nor 
hindered.  It  was  only  more  speciously, 
but  still  potently,  pursued.  In  con- 
sequence of  its  long-continued  use  of 
the  picture  of  a  working  horse,  in  con- 
nection \\ith  the  phrase,  'Be  sure  to 
work  the  horse,'  the  apjiellant's  rem- 


Manner  in  which  Truth  is  Told 


631 


held  also  that  a  court  would  not  rest  its  decision  on  a  minute  com- 
parison of  the  detail  of  labels,  boxes  and  names,  but  on  the  gen- 
eral impression  that  all  these  features  make. 

§  361.  Presumption  May  be  Based  on  Manner  in  which  the 
Truth  is  Told.  —  Speaking  the  truth  will  sometimes  furnish  a 
basis  for  a  presumption  of  fraud.  Causing  salesmen  to  make 
equivocal  or  literally  true  statements  to  customers  in  such  a  way 
as  to  confuse  them,  or  creating  subtle  distinctions  between 
brands  of  goods,  in  dealing  with  purchasers  or  asking  customers 
which  of  two  brands  of  goods  they  wish,  when  the  dealer  knows 
they  are  aware  of  the  existence  of  but  one,  will  create  such  a  pre- 
sumption. 


edy  had  become  well  known  as  'Work 
the  Horse  Gall  Cure'  before  the  ap- 
pellees applied  to  their  remedy  the 
picture  of  four  working  horses  in 
connection  with  the  words  'Four 
Horse  Gall  Cure,'  and  the  phrase 
'Always  work  the  horse  while  using 
the  cure.'  These  matters,  with  some 
slight  and  unimportant  variations, 
prominently  appear  upon  their  several 
packages,  circulars,  display  cards,  and 
directions.  Their  larger  boxes,  in 
which  the  smaller  ones  are  delivered  to 
dealers,  are  of  substantially  the  same 
size,  and  of  exactly  the  same  shape, 
as  those  of  the  appellant.  Both  are 
yellow  or  yellowish  in  color;  and  the 
smaller  boxes,  in  which  the  respective 
salves  are  sold  at  retail,  present  like 
features  of  correspondence.  *  *  * 
The  true  question  is  not  whether  the 
boxes,  circulars,  advertisements,  and 
directions  of  the  appellees  are,  in  their 
details,  the  same,  or  nearly  the  same, 
as  those  of  the  appellant,  but  whether 
the  general  effect  produced  by  those 
of  the  appellees  is  such  as  would  be 
likely  to  lead  ordinary  purchasers  to 
accept  their  gall  cure  as  being  that  of 
the  appellant;  and  our  coasideration  of 
the  evidence,  and  especially  of  the 
exhibits,  has  irresistibly  led  us  to 
the  conclusion  that  it  is.     The  com- 


plainant would  have  been  entitled  to 
protection  against  the  attempt  to  de- 
prive it  of  its  trade  or  customers  even 
if  it  had  not  proved  that  such  attempt 
had  been  successful."  McLean  v. 
Fleming,  96  U.  S.  245-1877;  24  L.  ed. 
828.  "The  means  devised  to  that 
end  were  well  calculated  to  mislead, 
and  it  was  not  essential  that  any  par- 
ticular person  should  have  been 
actually  misled."  Scheuer  v.  Midler, 
74  Fed.  225-189G;  20  C.  C.  A.  161; 
Snyift  &  Co.  V.  Brenner,  125  Fed.  826- 
1903  (C.  C.  S.  D.  N.  Y.).  "But  we 
may  add  without  referring  to  the 
testimony  in  detail,  that  we  think  it 
sufficiently  shows  that,  in  at  least 
some  of  the  instances  to  which  it 
relates,  the  object  designed  was  ac- 
complished." Hildreth  v.  McDonald, 
164  Mass.  16-1895;  41  N.  E.56.  Plain- 
tiff put  up  candy  in  paper  and  printed 
word  "Velvet"  in  red  letters  on  end 
of  papers  and  in  middle.  Defendant 
used  combination  of  size  and  shape  of 
candy,  which  it  had  a  right  to  do. 
But  in  addition  it  began  to  print  in 
Roman  letters  instead  of  script  the 
word  "McDonald"  in  red  ink  in 
middle  of  its  wrapper  and  not  on 
ends.  Held,  public  were  deceived  and 
that  the  resemblances  were  not  ac- 
cidental. 


632         Intent  to  Defraud  —  Must  It  Be  Proved? 

Defendant  had  been  enjoined  from  use  of  "Baker's  Choco- 
late," etc.,  without  distinguishing  between  *'W.  H.  Baker's 
Chocolate"  and  "Walter  Baker's  Chocolate."  Thereupon  he 
told  his  clerks  to  ask  customers  which  chocolate  they  wanted  — 
"We  have  two  Bakers.  Which  do  you  want,  W.  H.  or  Walter 
Baker?"  Nine  out  of  ten  would  answer  "whichever  is  best." 
Salesmen  would  then  give  them  W.  H.  Baker's.  The  court  said: 
"The  purchaser  was  entitled  to  that  which  he  demanded,  to  that 
which  had  been  approved  to  his  taste  by  experience  or  which  he 
had  been  recommended  to  purchase.  In  the  market  there  were 
no  '  two  Baker's '  products.  There  was  but  one,  and  that  was  the 
product  of  Walter  Baker  &  Co.,  Limited.  The  courts  had  en- 
joined William  Henry  Baker  from  using  the  word  'Baker'  alone, 
and  had  required  to  be  prominently  placed  upon  each  package 
the  statement  that  'W.  H.  Baker  is  distinct  from  the  old  choco- 
late manufactory  of  Walter  Baker  &  Company,'  No  such 
statement  or  representation  by  the  appellee  was  directed  to 
be  made  to  the  inquirer  for  'Baker's  Chocolate'  or  'Baker's 
Cocoa.'  Instead,  there  is  manifested  a  clear  design  to  mislead 
and  confuse  the  proposing  purchaser  with  the  statement  that 
there  were  two  'Baker'  products  in  the  market.  *  *  *  We 
do  not  mean  to  say  that  it  is  not  within  the  province  of  the  seller 
to  represent  to  the  proposing  purchaser  that  another  article 
which  he  has  is  superior  in  excellence  to  that  which  is  called  for, 
and  to  induce  him  by  proper  argument  or  statement  to  purchase 
the  other,  but  he  must  not  represent  such  other  to  be  the  product 
which  the  purchaser  had  called  for."  ^^ 

"  Walter  Baker  &  Co.,  Ltd.,  v.  Slack,  130  Fed.  514-1904  (C.  C.  A.). 


CHAPTER  XXIII 

Remedies 

Section  362.  Manufacturer's  responsibility  to  consumers  for  defective  goods. 

363.  Jurisdiction  of  courts  in  unfair  competition  cases. 

364.  Parties. 

365.  Injunctions  before  any  act  committed  —  bills  in  the  nature  of 

Quia  Timet. 

366.  Preliminary  injunctions. 

367.  Final  injunctions  —  general  considerations. 

368.  The  court  does  not  pass  upon  the  measures  adopted  by  the  de- 

fendant to  correct  his  unfair  acts. 

369.  Decree  correcting  a  confusing  use  of  names  and  signs. 

370.  Injunctions  against  use  of  color,  size,  form,  etc. 

371.  Injunctions  against  use  of  family  name. 

372.  Voluntary  discontinuance  of  infringing  acts  —  effect  of. 

373.  Injunctions  against  the  use  of  the  name  of  a  former  partner  or 

former  member  of  a  corporation. 

The  extent  and  character  of  the  remedy  which  the  court  will 
grant  to  the  plaintiff  is  the  most  vital  question  in  unfair  competi- 
tion law.  The  rules  relating  to  it  are  in  confusion.  The  basis  on 
which  the  relief  is  given  differs  with  different  courts.  The  prin- 
cipal point  on  which  opinion  differs  is  the  extent  to  which,  in  view 
of  modern  conditions  the  rule  of  caveat  emptor  should  be  modified. 
To  what  extent  should  the  court  protect  the  public  from  the 
substituter,  the  fraudulent  advertiser,  and  the  unfair  trader? 

The  whole  idea  of  unfair  competition  law  is  based  on  the  propo- 
sition that  the  defendant  is  guilty  of  misrepresentation,  either 
directly  or  indirectly. 

One  theory  of  remedy  is  that  the  defendant  should  be  forbidden 
to  do  any  act  that  amounts  to  a  misrepresentation  even  to  the 
most  ignorant  or  careless  purchaser. 

Another  theory  is,  that  short  of  actual  falsehood  in  sale  of 
goods,  the  purchaser  must  take  care  of  himself  and  protect  himself 
by  the  exercise  of  care  and  watchfulness. 

Cases  can  be  found  taking  practically  every  position  between 
these  two  extremes.  In  these  cases  are  found  discussions  of  the 
characteristics  of  the  "unwary  purchaser,"  the  "careless  pur- 

633 


634  Remedies 

chaser,"  and  the  "negligent  purchaser"  as  bearing  on  the  duty 
of  the  defendant  to  distinguish  his  goods. 

On  the  other  hand,  we  find  in  other  cases  the  rule,  that  an  affirm- 
ative duty  rests  on  all  new-comers  in  any  line  of  business  to  dis- 
tinguish their  goods  from  those  of  older  concerns.  From  these 
varied  standpoints  the  court  views  the  acts  of  the  defendant  and 
deteniiines  on  the  relief  to  be  granted.  More  and  more  clearly  it 
seems  to  be  recognized  that,  whatever  be  the  basis  of  the  relief,  it 
must  result  in  stopping,  ending,  the  confusion  caused  by  the 
defendant's  acts.  It  must  encourage  and  stimulate  honest  trading 
and  fair  advertising. 

Some  years  ago  a  form  of  statute  intended  to  prevent  fraudulent 
advertising  was  published  by  ''Printers'  Ink,"  and  this  magazine 
urged  the  adoption  of  statutes  of  this  character.  A  most  unusual 
response  was  made  to  this  appeal  resulting  in  the  passage  of  the 
model  statute,  sometimes  in  the  exact  form  suggested  and  some- 
times with  slight  modifications,  by  a  large  number  of  state 
legislatures  and  as  an  ordinance  by  numerous  city  governments. 
This  is  perhaps  the  most  tangible  evidence  of  the  desire  of  the 
public  for  more  specific  remedies  against  commercial  fraud  and 
unfairness  in  the  selling  of  merchandise  of  general  consumption. 

The  failure  of  the  "explanatory  phrase"  method  of  judicial 
regulation  of  unfair  competition  to  give  practical  commercial 
relief  against  unfair  competition  has  been  commented  on,  in  the 
chapter  on  "  Family  Names."  Reference  is  here  made  to  the  dis- 
cussion to  be  found  in  that  chapter.  With  the  increase  in  the 
efficiency  of  advertising  and  business  publicity  there  has  been 
brought  home  to  the  public  the  extent  to  which  the  average  house- 
hold suffers  actual  money  loss  from  unfair  competition  and  com- 
mercial fraud.  The  Post  Office  Department  reports  annually 
enormous  losses  suffered  by  the  public  from  mail  frauds  alone. 
A  decided  effort  on  the  part  of  our  courts  to  make  the  remedies 
in  unfair  competition  cases  more  effective  commercially  is  needed 
if  real  protection  against  such  frauds  is  to  be  available  in  the 
future.  It  often  happens  that  a  court  in  its  opinion  will  condemn 
a  defendant  in  the  strongest  terms  as  guilty  of  unfair  competi- 
tion, yet  will  enter  a  decree  that  will  permit  him  to  continue  the 
use  of  his  offending  symbols  in  a  manner  hardly  less  objectionable 
than  before  and  enjoy  the  added  advantage  of  doing  so  under 
judicial  sanction. 


Manufacturers'  Responsibility  for  Defective  Goods    G35 

§  362.  Manufacturers'  Responsibility  to  Consumers  for  Defec- 
tive Goods.  —  The  responsibility  of  manufacturers  and  dealers  to 
the  public  who  buy  and  consume  their  goods  is  increasingly 
recognized,  and  rightly  so,  and  remedies  have  been  applied 
recently  in  such  cases,  adequate  to  satisfy  the  injuries  suffered 
from  disregard  of  these  responsibilities.  In  the  case  of  Ketterer 
V.  Armour "  the  plaintiff  alleged  that  she  was  poisoned  by  eating 
pork  prepared  by  Armour  &  Co.,  which  was  infected  with  tri- 
chinae. The  defendant  demurred  and  contended  that  inasmuch 
as  it  did  not  deal  directly  with  the  consumer,  but  rather  through 
middlemen,  the  suit  should  be  dismissed.  In  overruling  the 
demurrer,  Judges  Noyes  said: 

''The  contention  of  the  defendant  is  that  a  manufacturer  who 
deals  with  the  middleman  and  not  directly  with  the  consumer 
owes  the  latter  no  duty  whatever  except  the  duty  owing  to  all 
men  to  refrain  from  knowingly  and  willfully  inflicting  injury.  And 
as  willful  injury  is  hardly  conceivable,  the  claim  comes  down  to 
this,  that  a  producer  of  meats  can  take  no  steps  to  detect  poison- 
ous parasites  in  his  products  although  the  danger  of  their  presence 
is  well  known  and  can  be  guarded  against,  and  yet  may  sell  such 
products  with  impunity  so  far  as  the  demands  of  poisoned  con- 
sumers are  concerned. 

''This  contention  is  based  upon  the  theory  that  so  long  as  the 
manufacturer  sells  only  to  the  dealer  or  middleman  he  is  a  stranger 
to  the  consumer;  there  is  no  contractual  relationship  to  base  a 
duty  upon.  It  is  said  that  the  dealer  may  sue  the  manufacturer 
and  that  the  consumer  may  sue  the  dealer  but  that  the  consumer 
cannot  sue  the  manufacturer.  In  other  words  if  the  claim  be  well 
founded  the  middleman  has  an  effective  remedy,  but  he  is  not 
injured.  The  consumer  is  injured,  but  he  cannot  look  to  the 
wrongdoer  and  must  sue  the  local  dealer,  who  is  likely  to  be  irre- 
sponsible and  is  certainly  free  from  fault. 

"And  this  contention  has  support  in  authority.  It  is  unques- 
tionably the  rule  in  the  case  of  many  manufactured  articles  where 
the  consequences  of  negligent  manufacture  cannot  be  followed 
down  to  their  final  results.  Thus,  as  is  pointed  out  in  one  of 
the  cases,  a  careless  manufacturer  of  iron  could  not  be  held  re- 
sponsible for  the  destruction  of  a  steamer  from  the  bursting  of  a 
boiler  into  the  construction  of  which   his  imperfect  material, 

"^  200  Fed.  322. 


636  Remedies 

after  passing  through  many  hands,  had  gone.  In  such  cases,  and 
in  others  less  clear,  it  is  said  that  public  policy  requires  that  the 
remedy  for  negligence  should  not  be  pressed  to  an  impracticable 
extreme.  But  I  am  wholly  unable  to  apply  this  rule  in  the 
present  case;  much  more  to  apply  it  in  the  name  of  public  policy. 
rul)lic  policy  regards  the  pu])lic  good  and  I  am  yet  to  be  con- 
vinced that  the  public  welfare  will  be  promoted  by  holding  that 
producers  and  manufacturers  owe  no  duty  to  consumers  to 
guard  against  diseased  and  poisonous  meats  and  provisions,  except 
in  those  isolated  cases  where  they  happen  to  sell  directly  to 
them. 

''The  remedies  of  injured  consumers  ought  not  to  be  made  to  de- 
pend upon  the  intricacies  of  the  law  of  sales.  The  obligation  of  the 
manufacturers  should  not  be  based  alone  upon  privity  of  contract. 
It  should  rest,  as  was  once  said,  upon  '  the  demands  of  social  jus- 
tice.' The  producer  should  be  held  responsible  for  the  results  of 
negligent  acts  which  he  can  readily  foresee.  There  is  no  analogy  be- 
tween the  case  where  defective  material  after  passing  through  many 
hands  produces  not-to-be-looked-for  ill  effects.  The  iron  manu- 
facturer who  fails  to  inspect  a  piece  of  iron  cannot  foresee  that  it 
will  be  used  in  a  boiler  and  cause  a  ship  to  sink.  But  the  meat 
packer  who  fails  to  inspect  his  products  for  poisonous  parasites  or 
ingredients,  knows  that  poison  will  poison  and  that  the  persons  to 
be  poisoned  through  his  neglect  will  be  those  who  eat  his  products 
and  no  one  else.  The  natural,  probable  and  almost  inevitable 
result  of  his  negligence  will  be  injury  to  the  consumer  and,  in  my 
opinion,  every  consideration  of  law  and  public  policy  requires 
that  the  consumer  should  have  a  remedy." 

§  363.  Jurisdiction  of  Courts  in  Unfair  Competition  Cases.  — 
The  general  rules  as  to  jurisdiction  apply  to  unfair  competition 
cases,  and  hardly  require  discussion  in  this  book.  Federal  juris- 
diction in  cases  of  this  sort,  attaches  in  two  classes  of  cases.  First, 
those  arising  under  the  United  States  trade-mark  statutes. 
Second,  unfair  competition  cases  based  on  diversity  of  citizenship.^ 

^  A.  Leschen  &  Sons  Rope  Co.  v.  that  the  jurisdiction  of  the  federal 

Broderick   &   Bascom  Rope  Co.,    134  court    depends    solely    on    whether 

Fed.    571-1904;    67    C.    C.    A.    418;  plaintiff's    registered    trade-mark    is 

affirmed  in  201   U.  S.   166-1906;  30  valid,  and  if  not  so,  jurisdiction  of  the 

L.  ed.  710;  26  Sup.  Ct.  425.    An  action  case  as  one  of  unfair  competition  can- 

for  infringement  of  trade-mark.    Held,  not  be  assumed.    "  Much  is  said  in  the 


Parties  637 

So  far  as  jurisdiction  of  the  Federal  courts  is  concerned,  unfair 
competition  cases  do  not  differ  from  other  cases.  The  general 
rules  in  that  regard  apply. 

The  courts  are  liberal  in  taking  jurisdiction  in  these  cases.  In 
Morris  v.  Altstedter,"^  the  defendant  did  business  in  New  York  as 
well  as  in  Canada.  He  made  inquiry  of  the  plaintiff  in  New  York 
as  to  his  prices,  and  then  in  Canada  made  goods  closely  resembling 
plaintiff's  and  sold  them  in  Canada.  Held,  that  the  New  York 
Court  had  jurisdiction. 

In  Vacuum  Oil  Co.  v.  Eagle  Oil  Co.,^  the  defendants  shipped 
oil  abroad  in  barrels  unmarked,  except  for  identification,  and 
then  branded  them  abroad  with  the  plaintiffs'  marks.  A  ques- 
tion of  the  jurisdiction  of  the  United  States  Circuit  Court  over 
the  action  arose,  and  Cross,  J.,  held  the  scheme  having  been 
conceived  here  and  partially  carried  out  here,  the  court  had  juris- 
diction. He  says  (p.  874):  "It  cannot  be  that  the  arm  of  the 
court  is  too  short  to  reach  and  stop  this  fraudulent  conduct,  or 
so  much  of  it,  at  least,  as  is  carried  on  in  this  country."  The 
court  also  held  that  "  the  fact  that  some  of  the  fraudulent  acts 
were  committed  outside  the  jurisdiction  of  this  court  and  outside 
of  the  United  States  will  not  avail  the  defendants  "  (p.  875). 

§  364.  Parties.  —  The  fact  that  the  plaintiffs  have  distinct, 
different,  and  unequal  interests  in  the  subject-matter  of  an 
equitable  proceeding  will  not  abate  the  proceeding,  for  equity 
provides  for  such  a  contingency  and  will,  in  a  decree,  adjust  and 
define  the  rights  of  each.  This  applies  to  unfair  competition 
cases."* 

(a)  Liability  of  Directors  and  Officers  in  Unfair  Competition.  — 
It  was  held  in  Armstrong  v.  Savannah  Soap  Works, ^  that  the 

brief  of  appellant  to  the  effect  that  without  authority  to  grant  any  relief 

the  defendant  has  been  guilty  of  unfair  on  the  ground  of  unfair  trade  conipeti- 

trade  competition  by  palming  off  on  tion."  Citing  Elgin  National  WatchCo. 

the  public  ropes  of  its  manufacture  as  v.IllinoisWatch  Case  Co.,  179 U.S. 665- 

complainant's  rope.     This  is  a  sub-  1900;  21  Sup.  Ct.  270;  45  L.  ed.  365. 

ject,  however,  over  which  the  federal  ^  156  N.  Y.  Supp.  1103-1916. 

courts   have   no   jurisdiction.     Com-  ^  154    fed.    867;    affirmed    in    162 

plainant    and    defendant    are    both  Fed.  671-1908. 

citizens  of  the  same  state,   and  for  ^  Jewish  Colonization  Ass'n.  v.  Solo- 

this  reason  jurisdiction  is  confined  to  mon  &  Germanski,  125  Fed.  994-1903 

the  trade-mark  as  registered.    If  that  (C.  C.  N.  Y.). 

mark  is  invahd,  the  federal  courts  are  '  53  Fed.  124-1892  (C.  C.  Ga.). 


638  Remedies 

directors  of  a  corporation  and,  it  seems,  its  agents  or  employees 
also,  may  properly  be  included  as  parties  defendant  in  a  suit 
for  trade-mark  infringement  or  unfair  competition.  But  directors 
will  not  be  joined  with  the  corporation  as  defendants  in  the 
absence  of  an  allegation  as  to  them  except  that  they  are  directors.* 
Where  a  suit  for  unfair  competition  was  brought  against  individ- 
uals doing  business  under  a  corporate  name,  the  corporation,  even 
if  it  existed  and  if  the  individuals  were  its  officers  or  agents,  was 
not  a  necessary  party .^ 

In  Saxlehner  v.  Eisner  &  M.  Co}  executive  officers  of  a  cor- 
poration were  held  liable  for  infringements  of  the  corporation's 
rights,  where  they  personally  directed  the  infringement,  especially 
as  they  controlled  the  corporation;  and  the  fact  that  an  injunc- 
tion had  been  obtained  against  the  corporation,  its  officers,  and 
agents,  did  not  preclude  complainant  from  obtaining  a  separate 
injunction  against  the  officers  as  individuals. 

(6)  Printers  who  make  labels,  or  manufacturers  of  wrappers  or 
bottles,  or  articles  which  are  used  unfairly,  may  be  made  parties 
defendant  jointly  with  the  trader  who  actually  does  the  passing 
off.«" 

(c)  Joint  Parties.  In  equity  all  having  interests  involved  in 
the  suit  may  join  therein  for  the  protection  of  such  rights  in  the 
subject-matter  as  they  may  have,  and  the  same  acts  may  be 
proceeded  against  in  one  action,  although  the  rights  may  be 
diverse,  —  as,  for  example,  the  infringement  of  separate  patents 
by  one  machine.^ 

So,  in  Northcutt  v.  Turney,^^  it  was  held  that  owners  of  dif- 
ferent springs,  entitled  to  use  a  common  trade-mark  or  trade 
name,  might  join  in  a  suit  to  enjoin  its  use  by  another. 

In  Morse  v.  Hall,^^  the  administrator  of  a  deceased  partner 
joined  with  members  of  a  firm  in  authorizing  the  use  of  the  de- 
ceased partner's  name.  Those  controlling  a  corporation  are  prop- 
erly joined  as  defendants  in  an  action  against  it,^^  as  are  the 

« Cropper  v.  Cropper,  23  R.  P.  C.  696;  Hillside  Chemical  Co.  v.  Munson 

388-1906.  &  Co.,  146  Fed.  198. 

''Elgin  Nat.  Watch  Co.  v.  Love-  ^Jewish  Colonization  Ass^n.  v.  Sol- 
land,  132  Fed.  41-1904  (C.  C.  la.),  omon  &  Germanski,  125,Fed.  994. 

8 147  P^ed.  189-1906  (C.  C.  A.  2d  i°  101  Ky.  314. 

Cir.).  "  109  Mass.  409. 

^  See  Sator  v.  Schaden,  125  Iowa,  ^^  California  Fig  Syrup  Co.  v.  Im- 
proved Fig  Syrup  Co.,  51  Fed.  296. 


Injunctions  Before  Any  Act  Committed  639 

organizers  and  officers  who  own  most  of  the  stock. ^•''  In  general, 
agents  and  servants  may  be  joined  as  defendants,  although  it 
would  seem  that  those  who  are  mere  workmen  in  the  employ  of 
a  manufacturer  ^^  should  not  be  so  joined.  An  exclusive  licensee 
should  be  joined  as  a  complainant  with  the  proprietor. ^'^ 

(d)  Stockholders  and  Agents  of  a  corporation  sued  for  unfair 
competition  are  not  proper  parties  defendant.^''  But  in  William 
G.  Rogers  Co.  v.  International  Silver  Co.^''  it  was  held  that  an 
individual  engaged  in  business  in  which  he  is  chargeable  with 
unfair  competition  and  who  transfers  the  business  to  a  corporation 
of  which  he  becomes  a  stockholder,  may  be  joined  with  the  corpo- 
ration as  a  defendant.  Sellers  of  the  offending  goods  may  be 
joined  as  defendants  with  the  manufacturers.^^ 

It  is  not  indispensable  to  join  as  a  defendant  the  corporation 
in  the  name  of  which  certain  individual  defendants  charged  with 
unfair  competition  were  carrying  on  a  business.  ^^  Nor  is  it  neces- 
sary to  join  as  a  defendant  the  actual  proprietor  of  a  business  who 
was  unknown  to  the  public  and  who  acted  through  an  agent. ^° 

§365.  Injunctions  Before  any  Act  Committed — -Bills  in 
the  Nature  of  Quia  Timet.  —  Injunctions  will  be  granted  to 
prevent  threatened  acts  of  unfair  competition.  It  is  not  neces- 
sary to  wait  until  a  name  that  tends  to  mislead  the  public  and 
is  likely  to  be  used  for  that  purpose,  is  actually  used  in  the  busi- 
ness of  the  defendant.  Equity  favors  him  who  in  such  a  case 
acts  promptly  and  before  rights  or  equities  (such  as  those  of 
innocent  stockholders)  have  attached.-^  Where  an  answer  avers 
that  the  defendant  intends  to  do  unfair  acts  in  the  future,  sub- 
stantially the  same  as  those  complained  of,, an  injunction  is  war- 
ranted. This  is  held  in  Enterprise  Mfg.  Co.  v.  Landers,^^  where  the 
goods,  which  the  defendant  had  made  in  imitation  of  those  of  the 
plaintiff,  had  been  offered  for  sale,  but  none  sold.    An  injunc- 

1'  Burrow  v.  Marccau,   124  A.   D.  i**  Matscll  v.  Flanagan,  2  Abb.  Pr. 

(N.  Y.)  665.  (N.  Y.)  459. 

^*Estes   V.    Worthington,    30    Fed.  ^^  Elgin    Watch    Co.    v.    Loveland, 

465.  132  Fed.  41. 

16  Wallach  v.  Wigmore,  87  Fed.  469  20  Bradley  v.  Norton,  33  Conn.  157. 

(preliminary  injunction  denied  where  ^i  Edison    Storage    Battery    Co.    v. 

such  licensee  was  not  joined).  Edison   Aidomohile   Co.   of   Washing- 

'' Hall's  Safe  Co.  v.  Herring-Hall-  ton,  D.  C,  67  N.  J.  Eq.  44-1904;  56 

Marvin  Safe  Co.,  146  Fed.  37.  Atl.  861. 

"  118  Fed.  133.  "  131  Fed.  240-1904. 


640  Remedies 

tioii  will  be  granted  against  persons  about  to  form  a  corporation 
to  engage  in  the  same  business  as  i)laintiff,  under  a  name  so 
similar  to  plaintiff's  as  to  be  likely  to  cause  confusion  and  so 
injure  plaintiff's  business,  without  waiting  for  business  to  be 
actually  begun  under  the  corporate  name.^^  No  evidence  of 
actual  deceit  is  necessary  to  procure  such  relief.  Probability 
of  deception  may  be  enough,  but  it  must  be  imminent.  No  sub- 
stantial pecuniary  loss  need  be  proved.  The  mere  fact  of  very 
close  resemblance  of  labels  has  been  held  enough  to  warrant  an 
injunction.  The  Court  of  Appeals  in  New  York  has  said:  ^* 
"No  evidence  was  given  or  offered  (in  this  case)  to  show  that  any 
person  had  actually  been  deceived  by  the  unitation  of  the  plain- 
tiff's trade-mark,  and  we  think  that  none  was  necessary  for  the 
maintenance  of  the  action.  It  is  the  liability  to  deception  which 
the  remedy  may  be  invoked  to  prevent.  It  is  sufficient  if  injury 
to  the  plaintiff's  business  is  threatened  or  imminent  to  authorize 
the  court  to  intervene  to  prevent  its  occurrence.  The  owner  is 
not  required  to  wait  until  the  wrongful  use  of  his  trade-mark  has 
been  continued  for  such  a  length  of  time  as  to  cause  some  sub- 
stantial pecuniary  loss."  ^^ 

Preliminary  injunction  will  be  granted  against  use  of  a  trade 
name  before  any  use  is  made  of  it  at  all,  where  it  appears  that 
there  are  other  names  which  are  legitimate  and  proper  for  the 
purpose,  and  that  the  defendant  is  threatening  to  take  away 
another's  business  by  use  of  the  particular  name  in  question. ^^ 

Two  corporations,  the  ''Elgin  National  Watch  Company" 
and  the  ''Elgin  Watch  Case  Company"  were  held  entitled  to 
restrain  defendants  from  completing  the  incorporation  of  a  rival 
company,  to  be  located  at  Elgin,  under  the  name  of  the  "Elgin 
National  Watch  Case  Company,"  on  the  ground  that  confusion 
would  be  sure  to  result.  ^^ 

The  "Universal  Life  Assurance  Society,"  which  had  long  been 
doing  a  large  life  insurance  business  with  head  offices  in  London, 

"  Hendriks  v.   Montagu,  50  L.   J.  "  See    also    Manufacturing    Co.    v. 

(Ch.)    N.    S.    456-1S81;    Huntley    &  Trainer,  101  U.  S.  51-1879;  25  L.  ed. 

Palmer  v.  Reading  Biscuit  Co.,  Ltd.,  993. 

10   R.   P.  C.   277-1893.     See   §  108,  ^^  Huyitley    &    Palmer    v.    Reading 

note  44.  Biscuit  Co.,  Ltd.,  10  R.  P.  C.  277- 

"  TaeJidsticksfabriks       Akticbolagat  1893. 

Vulcan  V.  Myers,  139  N.  Y.  364-67-  "  j.jigin  Nat.  Watch  Co.  v.  Eppen- 

68-1893;  34  N.  E.  904.  stein,  1  111.  Circ.  Ct.  602-1892. 


Preliminary  Injunctions  641 

was  held  entitled  to  an  injunction  against  the  registration  of  the 
name  ''Universe  Life  Assurance  Association,  Limited."  The 
l)roposed  new  company  had  been  advertised  as  about  to  engage 
in  the  business  of  hfe  insurance  in  Great  Britain  and  elsewhere, 
and  had  a  temporary  office  in  London,  but  had  not  yet  com- 
menced business.  ^^ 

Again,  although  infringement  has  been  discontinued  before 
the  bringing  of  the  suit,  complainant  may  have  an  injunction 
where  the  acts  or  declarations  of  defendants  indicate  that  they 
still  claim  the  right  to  do  the  acts  which  the  complainant  al- 
leges to  constitute  the  infringement.-^  The  complainant  is  not 
obhged  to  rely  upon  the  promises  of  the  defendant  to  respect 
his  rights  in  the  future.  He  is  entitled  to  the  order  of  the  court 
if  the  defendant  has  been  guilty  of  inequitable  conduct. 

§  366.  Preliminary  Injunctions.  —  In  general,  a  preliminary 
injunction  will  not  be  granted  where  the  evidence  is  conflicting 
and  doubtful.  Evidence  of  unfair  conduct  must  be  reasonably 
clear. ^°  But  even  where  a  preliminary  injunction  is  refused, 
protection  in  some  other  form,  pending  a  final  hearing,  is  often- 
times afforded  the  complainant,  as  by  requiring  defendant  to 
keep  an  account  of  sales.  In  Goodyear  Rubber  Co.  v.  Day,^^  the 
claim  was  that  the  name  ''Goodyear"  was  entitled  to  be  protected 
as  a  trade-mark  or  trade  name,  although  the  patent  had  expired ; 
and  that  it  had  not  become  common  property  as  merely  descrip- 
tive. The  court  was  inchned  to  think  that  there  was  no  infringe- 
ment, and  refused  a  preluninary  injunction,  but  directed  an 
account  of  sales  to  be  kept  by  defendant. ^^ 

The  publisher  of  "The  Pictorial  Almanack"  sought  to  enjoin 
the  pubhsher  of  "Old  Moore's  Family  Pictorial  Almanack,"  the 
cover  of  which  resembled  in  some  points  that  of  the  first  almanac, 
but  in  other  points  differed  conspicuously.    The  court  refused  an 

^Hendriks  v.  Montagu,  50  L.  J.  Auwell,    158   Fed.    462-190S    (C.    C. 

(Ch.)  N.  S.  456-1881.  E.  D.  N.  Y.). 

^^Saxlehner  v.   Eisner  &  M.  Co.,         "22  Fed.  44-1884   (C.  C.  E.  D. 

147  Fed.  189-1906  (C.  C.  A.  2d  Cir.),  Mo.). 

affirming  140  Fed.  938-1905  (C.  C.          ^2  Stirling  Silk  Mfg.  Co.  v.  Sterliiig 

S.  D.  N.  Y.).  Silk  Co.,  59  N.  J.  Eq.  394-1900;  46 

^°Cantrell    &    Cochrane    v.    Witte-  Atl.   199.     A  preliminary  injunction 

mann,   109  Fed.   82-1901    (C.   C.   S.  was  denied,   on   condition,   however, 

D.  N.  Y.) ;  Benjamin  Moore  &  Co.  v.  that  defendants  should  keep  an  ac- 
count of  profits  pending  suit. 


042 


Remedies 


injunction,  but  directed  an  account  of  sales  to  be  kept,  Chancellor 
Cottenham  saying  that  unless  the  legal  right  is  very  clear  in  a  case 
of  this  kind,  no  preliminary  injunction  should  be  granted.''^ 

(a)  Temporary  Relief,  Pending  Trial.  —  It  frequently  happens 
that  an  application  will  show  apparent  grounds  for  a  prelhninary 
injunction,  provided  the  facts  alleged  are  true,  but  it  is  not  possi- 
ble for  the  court  to  be  certain  before  trial  of  the  truth  of  the 
allegations  of  these  facts.  In  such  cases  preliminary  relief  of  a 
temporary  sort  may  be  granted  until  the  facts  are  passed  upon 
at  a  final  hearing. 

In  Rushmore  v.  Saxon  ^^  unfair  competition  in  imitating  a  lamp 
was  alleged.    Decision  upon  most  of  the  questions  involved  —  as 

'^  Spottiswoode  v.  Clarke,  2  Phil.  97  Fed.  785-1899,  38  C.  C.  A.  (8th 
154-1846;  Van  Camp  Packing  Co. 
V.  Cruikshanks  Bros.  Co.,  90  Fed. 
814-1898  (C.  C.  A.  3d  Cir.).  Pre- 
hminary  injunction  held  to  have  been 
properly  denied,  where  the  evidence 
did  not  show  with  certainty  that 
there  was  such  similarity  in  the  dress 
of  goods  as  to  mislead  the  ordinary 
purchaser,  there  being  no  proof  that 
anyone  had  actually  been  misled. 
A''.  Y.  Asbestos  Mfg.  Co.  v.  Ambler 
Asb.  Air-Cell  Cov'g  Co.,  99  Fed.  85. 
1900  (C.  C.  E.  D.  Pa.).  Not  granted 
on  ex  parte  affidavits  unless  clear  case 
made  out,  where  it  would  result  in 
serious  damage  to  defendant.  Baker 
V.  Sanders,  97  Fed.  948-1899  (C.  C. 
E.  D.  Pa.).  Courts  are  inclined  to 
grant  a  preliminary  injunction  against 
the  use  of  the  labels,  where  a  decree 
has  been  entered  by  another  court  in  a 
suit  by  the  same  complainant  against 
a  defendant,  enjoining  the  use  of  the 
same  labels.  E.  T.  Fairbanks  &  Co.  v. 
Des  Moines  Scale  &  Mfg.  Co.,  96 
Fed.  972-1899  (C.  C.  S.  D.  Iowa). 
Refused  where  complainant  had  for 
many  years  known  of  defendant's 
alleged  infringement,  where  answer 
fully  meets  the  case  made  by  the  bill, 
and  where  defendant's  insolvency  is 
not  shown.     Centaur  Co.  v.  Marshall, 


Cir.)  413.  Refused,  where  asked 
to  enjoin  use  of  wrappers  already 
abandoned  by  defendants,  or  of 
advertising  matter  which  they  agree 
at  the  hearing  not  to  use  pend- 
ing the  suit.  Clear  case  must  be 
made  out,  both  as  to  right  and  to 
injury.  Postal  Tel.  Cable  Co.  v.  Netter, 
102' Fed.  691-1900;  N.  Y.  Asb.  Mfg. 
Co.  V.  Ambler,  etc.,  Co.,  102  Fed.  890- 
1900;  Pfeiffer  v.  WiMe,  107  Fed.  456- 
1901;  Cantrell  &  Cochrane  v.  Witte- 
mann,  109  Fed.  82-1901  (conflict  of 
evidence  as  to  priority  of  form  of 
label);  Diamond  Match  Co.  v. 
Safe  Harbor  Co.,  109  Fed.  154-1901; 
see  Schenker  v.  Awerbach,  89  App.  Div. 
(N.  Y.)  612;  National  Starch  Co.  v. 
Koster,  146  Fed.  259-1906.  Not 
granted  on  conflicting  evidence  — 
where  complainant  had  known  of 
conduct  of  defendant  for  a  year  and  a 
half.  C.  0.  Burns  Co.  v.  W.  F.  Burns 
Co.,  118  Fed.  944-1902;  Int.  Silver  Co. 
V.  Simeon  L.  &  George  H.  Rogers  Co., 
110  Fed.  955-1901.  Part  of  the  relief 
sought  may  be  afforded  by  prelim- 
inary injunction,  while  another  part 
is  withheld  until  hearing  and  final 
decree. 

'*  154  Fed.  213-1907. 


Preliminary  Injunctions  643 

to  details  of  construction  and  as  to  certain  words  used  —  was 
postponed  till  final  hearing;  but  defendant  was  required,  by  the 
preliminary  injunction,  to  enlarge  his  nameplate  so  as  to  make 
his  distinctive  name  more  conspicuous. 

In  another  case  the  following  order  was  made: 

"Upon  filing  a  bond  for  $2,000,  conditioned  upon  final  suc- 
cess in  the  suit,  and  which  would  seem  to  be  amply  sufficient  to 
cover  any  additional  expense  to  which  defendant  may  be  put, 
complainant  may  take  an  injunction  pendente  lite  restraining  the 
defendant,  Keller,  from  selling  the  candies  of  Allegretti  &  Co.  in 
packages  bearing  the  name  'Allegretti,'  unless  such  name  be 
accompanied  with  the  statement, '  No  connection  with  the  original 
Allegretti  of  Chicago;'  and  be  further  restrained  from  using  said 
name  in  signs  or  advertisements  unaccompanied  with  a  hke 
statement."  ^^ 

(6)  Important  and  Basic  Facts  not  Usually  Decided  on  Prelimi- 
nary Hearing.  —  In  the  Southern  District  of  New  York  it  has 
been  said  to  be  the  practice  of  the  court  to  delay  issuing  injunc- 
tions in  trade-mark  cases  unless  convinced  that  the  validity  of 
the  mark  had  been  tested. ^^  Whether  the  court  would  apply 
this  rule  when,  in  a  case  of  unfair  competition,  the  affidavits  on 
application  for  preliminary  injunction  show  that  a  representation 
had  been  made  by  the  defendant  that  he  was  the  plaintiff,  or 
his  goods  were  the  plaintiff's  goods,  may  be  doubted. 

(c)  Identity  and  Quality.  —  A  broad  decision  as  to  identity  or 
quality  as  between  two  brands  of  goods  will  not  be  rendered  on 
interim  apphcation.  The  ''t^hartreuse"  case  well  illustrates  this 
point. ^'  The  monks  of  the  Grande  Chartreuse  in  France  had  long 
sold  a  liqueur,  claimed  to  be  made  by  a  secret  process,  and  well 
known  as  ''Chartreuse,"  —  the  name  being  registered  as  a  trade- 
mark in  the  United  States.  About  1901  the  order  was  judicially 
dissolved,  its  members  expelled  from  France,  and  a  receiver  ap- 
pointed, who,  under  authority  of  the  court,  continued  the  trade- 
marks formerly  used  by  the  monks,  and  put  up  the  goods  in  the 
same  manner  and  with  the  same  labels  as  they  had  done.  De- 
fendant was  the  receiver's  agent  in  the  United  States.  The  monks 
removed  to  Spain,  and  there  engaged  in  the  manufacture  of  what 

35  Allegretti  v.  Keller,  85  Fed.  643.  "  Baglin  v.  Cusenier  Co.,  141  Fed. 

^<^Carmel    Wine    Co.    v.    Palestine      497-1905  (C.  C.  A.  2d  Cir.). 
Hebrew  Wine  Co.,  161  Fed.  654-1908. 


644  Remedies 

they  claimed  to  be  the  only  genuine  "Chartreuse,"  which  they 
sold  under  a  new  label  and  trade-mark.  A  preliminary  injunc- 
tion restraining  defendant  from  using  in  this  country  the  bottles, 
labels,  name,  and  trade-mark  formerly  used  by  the  monks,  based 
on  affidavits  largely  made  on  infonnation  and  belief,  and  which 
did  not  determine  the  question  whether  the  product  is  the  same 
originally  sold  under  such  trade-mark,  was  too  broad  in  its  terms, 
and  was  modified  by  allowing  sales  by  defendant,  provided  an 
additional  label  was  attached  to  each  package  reading  as  follows : 
"This  licjueur  is  made  at  the  Grande  Chartreuse,  in  France,  under 
the  direction  of  M.  Lecouturier,  appointed  liquidator  of  the  prop- 
erty of  the  congregation  of  Carthusian  monks  after  its  dissolution 
and  expulsion  from  France"  (p.  499). 

(d)  Conditions  May  be  Required  of  Plaintiff  Before  Injunction 
Issues.  —  A  preliminary  injunction  may  require,  as  a  condition 
of  its  issuance,  that  a  stipulation  as  to  future  conduct  be  entered 
into  by  the  plaintiff  with  the  defendant.  Where  the  defendant 
manufactured  what  might  properly  be  designated  as  "Clark 
Spool  Cotton,"  and  both  parties  advertised  their  own  goods  as 
the  only  genuine  article  as  described,  the  plaintiffs  were  held  not 
entitled  to  enjoin  defendant  from  continuing  such  advertisements, 
unless  plaintiffs  would  stipulate  to  discontinue  their  own  adver- 
tisement of  the  same  nature.  ^^ 

In  the  ordinary  case,  a  preliminary  injunction  will  prohibit 
the  specific  imitation  complained  of  and  also  any  other  mislead- 
ing imitation,  leaving  open  the  question  as  to  just  what  may  be 
misleading,  after  holding  that  the  onfe  in  use  by  the  defendant  is 
actually  causing  deception. 

Lacombe,  J.,  has  granted  a  preliminary  injunction  against 
use  of  packages,  samples  being  annexed  to  the  order,  and  against 
the  use  of  "any  other  packages  which  by  the  collocation  of 
bottle,  carton,  wrappings,  labels,  colors,  and  type  so  simulate  the 
small  packages  of  the  complainant  as  to  be  calculated  to  mislead 
purchasers,"  and  thus  leaving  it  to  the  parties  themselves  to  de- 
cide to  what  packages,  bottles,  and  the  like  would  or  would  not 
be  similar. ^^ 

(e)  Injunction  Directing  Use  of  Explanatory  Phrases.  —  To 
find    (as  has  been  done  in  some  cases  in  which  explanations 

'« Clark  V.  Clark,  25  Barb.  (N.  Y.)  '"  Hansen  v.  Sicgel-Cooper  Co.,  106 

76-1857.  Fed.  690-1900  (C.  C.  S.  D.  N.  Y.). 


Preliminary  Injunctions  645 

have  been  ordered  to  be  affixed  by  the  defendant  to  his  name 
or  label)  that  the  defendant  has  intentionally  attempted  to  pass 
of!"  his  goods  as  the  plaintiffs,  and  then  to  permit  him  to  continue 
the  same  acts,  with  an  explanation  which  gives  notice  that  the 
defendant  is  committing  a  fraud  but  the  public  should  disregard 
it,  is  neither  logical  nor  effective  to  prevent  fraud. 

The  explanatory  phrase  is  a  compromise  growing  out  of  the 
difficulties  of  family  name  and  geographic  name  cases,  largely. 
It  is  a  makeshift.  It  admits  that  the  use  of  the  name  causes 
frdud  and  the  court's  lack  of  power  to  prevent  that  fraud. 

Sometimes  a  preliminary  injunction  has  been  granted  directing 
that  any  use  of  the  name  claimed  by  the  plaintiff  shall  be  accom- 
panied by  a  statement  that  the  defendant  has  no  connection 
with  the  plaintiff,  this  being  ordered  because  of  the  affirmative 
duty  which  rests  on  the  defendant  to  differentiate  the  name  he 
uses  as  a  trade  name  from  other  names  which  are  in  use  when  he 
adopts  his  own  trade  name,  leaving  the  granting  of  more  far- 
reaching  relief  to  the  trial. ^°  Compelling  defendant  to  use  ex- 
planatory phrases  is  a  favorite  method,  in  some  courts,  of  solving 
(if  such  decrees  can  really  be  said  to  solve  or  settle  the  issues  in 
such  instances)  difficult  cases  where  both  plaintiffs  have  apparent 
rights  to  the  use  of  the  name  or  mark  involved  in  the  suit.  An 
increasing  number  of  such  decrees  are  found  in  family  name  cases. 
See  chapter  on  '^  Family  Names."  Explanatory  phrases  some- 
times offer  the  only  solution  of  a  case  fair  to  both  sides.  In  other 
cases,  use  of  these  phrases  has  been  ordered  in  face  of  proof 
that  no  amount  of  explanation  will  eliminate  confusion  and  fraud. 
Where  the  article  sold  by  the  parties  is  small  and  low  priced, 
bought  frequently  and  carelessly  by  the  public,  or  where  the  carton 
wrapper  or  distinguishing  mark  is  immediately  torn  off  a  cheap 
article  by  the  average  buyer  of  it,  the  use  of  explanatory  phrases 

^'^  Allegretti  Choc.  Cream  Co.  v.  the  identity  of  its  own  products  and 
Keller,  85  Fed.  643-1898  (C.  C.  S.  those  of  plaintiff  respectively.  Held, 
D.  N.  Y.).  Complainant  manufac-  that  defendant  should  be  restrained, 
tured  confectionery  in  Chicago,  its  pendente  lite,  from  seUing  the  goods  of 
products  being  known  also  in  New  Allegretti  &  Co.  in  packages  bearing 
York.  Defendant  was  the  New  York  the  name  "Allegretti"  unless  accom- 
agent  of  Allegretti  &  Co.,  competing  panied  with  the  statement  "no  con- 
manufacturers  in  Chicago.  The  court  nection  with  the  original  'Allegretti'  of 
considered  that  the  last-named  firm  Chicago,"  and  from  advertising  in  that 
had  willfully  created  confusion  as  to  name  without  a  similar  statement. 


C46  Remedies 

is  a  pure  farce.  This  fact  was  summarized  once  for  all  by  Lord 
McNaughton  when  he  said  of  Stone  Ale  buyers:  "People  want 
beer,  not  explanations."  The  object  of  an  unfair  competition 
suit  is  not  explanation  of  confusion  but  elimination  of  confusion. 

Usually  there  is  little  reason  for  directing  the  use  of  explana- 
tions even  during  the  pendency  of  the  action.  The  use  of 
such  phrases  is  not  and  never  can  be  a  complete  and  effec- 
tive remedy  giving  adequate  relief  to  the  plaintiff,  because 
there  is  no  certainty  that  the  explanation  reaches  those  who 
consider  buying  the  goods  to  which  it  is  attached.  Wliy  should 
a  defendant  be  permitted  to  use  a  symbol  which  is  so  confusing 
as  to  make  an  explanation  necessary  and  which  at  the  same  time 
renders  the  explanation  futile?  If  the  symbol  be  a  poison  that 
demands  an  antidote  —  why  permit  the  use  of  the  poison  at  all? 

(/)  The  Necessity  Rule.  —  Elsewhere  in  this  volume  the  rule  of 
necessity  in  these  cases  is  discussed.  Often  there  is  a  clash  between 
the  right  of  the  defendant  on  the  one  hand  to  use  a  name  that  is 
in  the  public  domain  or  is  his  family  name,  and  on  the  other  the 
right  of  the  plaintiff  to  be  freed  of  unfair  competition  and  the 
right  of  the  public  to  a  reliable  means  of  choosing  between  the 
goods  of  the  two  parties.  Where  such  a  clash  exists,  the  courts 
usually  consider  that  they  are  not  warranted  in  depriving  the 
defendant  of  the  use  of  his  name  or  a  name  publici  juris  even 
though  he  uses  it  as  an  instrument  of  fraud.  It  is  true  generally 
speaking  that  every  man  has  a  right  to  the  use  of  his  own  name, 
and  that  every  one  has  a  right  to  use  names  and  words  in  the 
public  domain.  That  these  principles  should  be  so  applied  as 
to  prevent  equity  from  stopping  commercial  fraud,  seems  impos- 
sible, yet  such  is  often  the  fact. 

It  would  seem  possible  to  protect  the  plaintiff  and  the  public 
in  these  cases,  more  effectively  than  can  be  done  by  explanations, 
by  applying  to  many  of  them  the  rule  of  necessity.  This  rule  is 
well  recognized  in  cases  involving  corporate  names.  The  courts 
take  notice  of  the  fact  that  in  choosing  a  corporate  name  it  is  not 
necessary  to  adopt  any  particular  name.  This  being  so  it  is  held 
to  be  the  duty  of  the  incorporators  to  choose  one  that  will  not 
conflict  with  the  names  already  in  use  in  the  business  in  which  the 
new  corporation  is  to  compete.^* 

*^  Higgins  v.  IHggins,  144  N.  Y.  Oneida  Gatne  Trap  Co.,  Inc.,  168  A. 
462-1895;     Oneida     Covimunilij     v.      D.  (N.  Y.)  769. 


Preliminary  Injunctions  647 

Many  defendants  in  cases  of  this  sort  have  chosen  deliberately 
names  that  are  similar  to  the  names  in  use  by  the  plaintiff,  and 
have  done  this  without  the  slightest  commercial  necessity  for  so 
doing.  Absolutely  no  commercial  necessity  required  Chas.  S. 
Higgins  to  adopt  the  name  Higgins  Soap  Co.  for  his  new  con- 
cern. ^^"  The  promoters  of  the  Modern  Pen  Co.  were  under  not  the 
slightest  necessity  commercially  to  sell  pens  under  the  name 
''Waterman."  They  could  equally  well  sell  their  pens  by  any 
one  of  a  thousand  other  names. ^^'' 

The  fundamental  and  outstanding  fact  in  all  these  cases  is  that 
the  dealer  who  is  seeking  to  build  up  his  business  on  goods  pos- 
sessing peculiar  merit  of  their  own,  will  do  almost  anything  to 
'escape  (and  not  adopt)  methods  that  will  confuse  his  goods  with 
those  of  a  competitor.  If  the  Modern  Pen  Co.  was  not  quite  con- 
tent that  its  pens  should  be  confused  with  those  of  another  and 
older  concern  its  officers  would  go  to  extreme  lengths  to  prevent 
the  name  ''Waterman  "  being  in  any  way  associated  with  its  goods, 
instead  of  fighting  to  the  Supreme  Court  for  the  right  to  use 
that  name. 

In  dealing  with  defendants  who  claim  superior  merit  for  their 
goods  and  yet  fight  to  be  able  to  sell  them  under  some  mark  that 
will  cause  them  to  be  confused  constantly  with  goods  of  compet- 
itors, the  courts  should  not  stop  at  explanations  and  apologies, 
even  in  granting  interim  orders  or  preliminary  injunction  appli- 
cations, but,  except  in  cases  where  the  defendants  can  show  that 
real  commercial  necessity  compelled  them  to  do  as  they  have  done, 
should  apply  the  rule  that  he  who  abuses  a  right  forfeits  it;  and 
should  forbid  such  defendants  to  use  geographic,  family,  and 
corporate  names  thus  abused,  not  in  all  ways,  but  in  the  one 
particular  business  field  in  which  they  have  misused  them. 

(g)  Preliminary  Injunction  Essential  to  Justice  in  Certain 
Classes  of  Cases.  —  In  some  instances  the  issuance  of  a  preliminary 
injunction  is  most  important,  if  not  vital  to  the  protection  of  in- 
dustrial property.  The  effect  of  a  continuing  trespass  upon  real 
property  can  usually  be  estimated  with  reasonable  certainty. 
The  effect  of  the  sale  of  an  infringement  or  imitating  article  upon 
the  reputation  and  future  of  an  article  of  merchandise,  can  be 

^^^  Higgins  v.  Higgins,  144  N.  Y.,         ^'  L.  E.  Waterman  Co.  v.  Modern 
462-1895;  39  N.  E.,  490;   27  L.  R.     Pen  Co.,  235  U.  S.  88. 
A.,  42. 


648  Remedies 

estimated  or  measured  by  no  one,  with  any  accuracy.  Public 
confidence  in  merchandise  is  under  no  man's  control.  It  may  be 
lost  forever  to  a  plaintiff,  if  he  be  denied  a  preliminary  injunction. 
While  he  is  awaiting  trial  and  overcoming  the  dilatory  tactics  of 
an  opponent,  the  reputation  of  an  article  just  gaining  a  place  in 
pul)lic  confidence  may  be  practically  ruined  by  a  "fighting  brand" 
or  "competitive  brand"  of  an  unscrupulous  rival  fighting  to  pre- 
vent the  increase  of  competition. 

On  this  point  the  following  statements  are  most  pertinent: 
"However  valuable  the  plaintiff's  invention  may  be,  yet  if  it  be 
discredited  by  a  worthless  article,  it  would  be  impossible,  in  any 
reasonable  time,  to  restore  the  public  confidence  in  the  genuine 
article.    In  this  consists  the  injury."  ^^ 

"If  the  complainants  be  not  protected  by  preliminary  injunc- 
tion against  such  use,  —  if,  in  other  words,  that  question  be  post- 
poned to  the  final  hearing,  —  there  is  every  inducement  to  the 
defendant  to  delay  and  prolong  the  litigation,  continuing,  mean- 
while, the  assaults  upon  the  good-will  of  the  complainants,  so  that, 
even  if  final  decree  be  at  last  rendered  in  favor  of  complainants, 
the  good-will  will  have  been  so  seriously  and  irreparably  injured, 
if  not  in  great  measure  destroyed,  as  to  leave  the  complainants 
practically  without  remedy."  ^^ 

§  367.  Final  Injunctions  —  General  Considerations.  —  In 
formulating  a  final  injunction  in  trade-mark  and  unfair  competi- 
tion cases,  the  object  of  the  court  is  to  stop  confusion,  to  eliminate 
the  unfair  dealing.  Its  primary  purpose  is  to  protect  not  the 
defendant's  business  but  that  of  the  plaintiff.  Judge  Woodward 
of  New  York  has  said:  "The  plaintiff  is  entitled  to  a  practical 
m junction.  *  *  *  It  is  not  the  province  of  a  court  of 
equity  to  aid  wrongdoers;  it  fulfills  its  mission  when  it  has  re- 
strained the  commission  of  a  wrong,  leaving  the  wrongdoer  to 
figure  out  for  himself  how  far  he  can  disregard  the  mandate  of 
the  court  and  the  requirements  of  a  clean  conscience."  ^* 

The  injunction  should,  however,  be  no  broader  than  is  necessary 
to  give  adequate  protection  to  the  plaintiff.     Where  the  case 

"McLean,   Cir.   J.,   in   Coffeen  v.  ** Oneida    Commtinity    v.     Oneida 

Brunton,  5  Fed.  Cas.  1184,  1185-No.  Game  Trap  Co.,  Inc.,  168  A.  D.  (N.  Y.) 
2946-1849.  769,  782-1915. 

"  Garrett  v.  T.  H.  Garrett  &  Co.,  78 
Fed.  472-479;  24  C.  C.  A.  173. 


Measures  Adopted  by  Defendant  to  Correct  Acts    049 

involves  a  name  that  is  public i  juris  the  injunction  should  not  be 
too  general  in  terms  but  should  show  that  it  is  the  trade  meaning 
of  the  word  or  name  and  not  its  general  meaning  that  is  involved. 
Where  the  plaintiff  possesses  full  rights  to  a  trade  use  of  a  fanciful 
word  or  tenn  the  injunction  may  be  absolute.  Where  explanatory 
phrases  are  ordered  to  be  used  by  the  defendant  the  injunction 
sometimes  specifies  the  exact  form  of  such  phrases. 

As  to  forms  of  final  decrees,  see  Cohen  v.  Naglc,^^  enjoining 
use  of  name  ''Keystone  Maid  Cigars;"  also  a  fonn  of  injunction 
in  Meyer  v.  Dr.  Bull  Co.'^^  The  form  in  Von  Faber  v.  Faber  *^ 
was  in  part  this:  "The  complainant  is  entitled  to  a  decree  en- 
joining and  restraining  the  defendant  from  using  the  name 
'Faber'  alone  as  applied  to  pencils  or  rubber  stationer's  goods, 
and  from  using  the  name  'Faber  Pencil  Company,'  or  'E.  Faber 
Pencil  Company,'  and  from  making,  selling,  or  causing  to  be 
made  or  sold,  or  advertising,  or  causing  to  be  advertised,  any  lead 
pencils,  erasive  rubber,  or  rubber  bands,  bearing  thereon,  or  on 
the  labels,  wrappers,  boxes,  or  other  coverings  affixed  thereto,  or 
in  which  the  same  are  contained,  either  stamp  lettering  or  other 
marks  containing  the  name  'Faber,'  or  'Faber  Pencil  Co.,'  or 
'E.  Faber  Pencil  Co.,'  or  any  like  or  similar  designation  in  which 
the  name  'Faber'  is  used  without  the  prefix  'Eberhard,'  or 
'John  E.,'  .or  'J.  Eberhard,'  but  the  defendant  may  use  the 
word  'Faber'  with  either  of  said  prefixes,  as  he  may  elect." 

See  also  form  of  final  decree,  in  Cincinnati  U.  S.  Co.  v.  Cin- 
cinnati Shoe  Co.'^^ 

For  form  of  a  decree  against  the  use  of  a  name  of  a  semi-geo- 
graphical character  which  is  held  to  have  acquired  a  secondary 
meaning,  see  Cohen  v.  Nagle^'^ 

As  to  form  of  prayer  for  final  decree,  see  Vulcan  Detinning 
Co.  V.  American  Can  Co.^° 

§  368.  The  Court  Does  not  Pass  Upon  the  Measures  Adopted 
by  the  Defendant  to  Correct  His  Unfair  Acts.  —  A  final  injunc- 
tion should  prohibit  the  specific  infringement  or  act  of  unfair 

«  190  Mass.  4-12-13-1906.  Walter  Baker  &  Co.  v.  Baker,  87  Fed. 

« 58  Fed.  884.  209-211. 

«124  Fed.  603-614-1903  (C.  C.  S.  «  190  Mass.  4-12-13-1813;  76  N. 

D.  N.  Y.).  E.  276. 

^8  7    Ohio    N.    P.    135;    Enterprise  ^"69  Atl.   1103-1908  (N.  J.  Eq.)- 

Co.   V.   Landers,    131    Fed.   240,   also  1908. 


650  Remedies 

competition  complained  of,  and  also  all  similar  infringements  or 
acts.  But  it  is  not  the  province  of  the  court,  upon  the  settlement 
of  the  decree,  to  pass  in  advance  upon  a  modified  form  of  name, 
marks  or  dress  proposed  to  be  adopted  by  defendant  to  correct 
the  abuses  alleged  in  the  plaintiff's  bill,  and  to  determine  whether 
or  hot  the  corrected  form  is  fair  to  the  plaintiff  and  lawful.  If  the 
court  did  this  it  would  aid  the  defendant  to  come  as  near  as 
possible  to  the  plaintiff's  mark  and  still  keep  within  the  law. 
Fine  distinctions  of  conduct  are  not  favored  in  unfair  competition 
decrees.  The  court  assumes  that  if  the  defendant  be  honest,  he  is 
seeking  to  sell  his  goods  on  their  own  merits  solely.  If  he  is  to 
do  that  he  has  no  occasion  to  split  hairs  over  the  resemblance 
between  his  goods  and  those  of  his  rival,  for  the  less  they  resemble 
each  other  the  better  satisfied  he  should  be.  The  average  defend- 
ant in  these  cases  seldom  harbors  any  ambition  to  sell  his  goods  on 
their  own  merits.  The  choosing  of  a  new  mark,  or  name,  or  label 
must  rest  with  the  defendant,  not  with  the  court.  His  duty  in 
doing  that  is  to  keep  as  far  from  imitation  as  possible.  He  must 
make  his  choice  unaided  by  the  court. 

The  tendency  in  England  is  to  include  in  the  injunction  merely 
a  general  direction  to  the  defendant  to  do  no  act  that  will  pass 
off  his  goods  as  those  of  plaintiff.  This  leaves  the  details  to  the 
defendant  to  work  out  as  best  he  can.  This  procedure  is  safe  in 
jurisdictions  where  the  rules  as  to  contempt  of  court  are  enforced 
strictly.  Such  injunctions  are  consistent  with  the  rule  of  unfair 
competition  as  stated  by  Woodward,  J.,  in  the  Oneida  Trap  Case 
(supra)  i.  e.,  that  it  is  not  the  part  of  the  court  to  assist  the  de- 
fendant to  find  a  way  to  market  his  wares  honestly.  For  the 
court  to  frame  effective  injunctions  of  this  sort  would  involve 
placing  before  the  court  much  evidence  as  to  commercial  practices 
and  conditions  under  which  the  defendant  must  carry  out  the 
terms  of  the  injunction,  much  of  which  evidence  is  quite  irrelevant 
to  the  issue  in  the  cause. 

It  is  undoubtedly  proper  and  wise  that  the  injunction  should  be 
definite  and  specific  as  to  the  practices  which  the  defendant  is 
forbidden  to  continue. 

The  Circuit  Court  of  Appeals  for  the  Seventh  Circuit  has 
said  ^^  that  a  court  should  not  in  advance  approve  a  new  form  of 
label  proposed  to  be  used,  especially  where  there  was  deliberate 

51  Chas.  E.  Hires  Co.  v.  Consumers'  Co.,  100  Fed.  809-1900. 


Decree  Correcting  Confusing  Use  of  Names      651 

infringement  in  the  use  of  the  old  label ;  that  in  such  cases  it  ought 
not  to  say  how  near  the  infringer  may  lawfully  approximate  the 
label  of  the  complainant,  but  should  cast  the  burden  upon  the 
guilty  party  of  deciding  for  himself  how  near  he  may  with  safety 
drive  to  the  edge  of  the  precipice,  and  whether  it  be  not  better 
for  him  to  keep  as  far  from  it  as  possible. '^^  The  same  court 
has  also  said:^^  ''But  the  court  cannot  say  what  shall,  so 
much  as  what  shall  not,  be  done;  the  limit  of  which  would 
seem  to  be  that,  as  aheady  indicated,  they  shall  not  use  the  word 
*  Hooton '  *  *  *  except  as  they  clearly  and  unmistakably 
state  *  *  *  that  such  cocoa  is  not  the  Van  Houten  cocoa 
manufactured  by  the  complainants.  Van  Houten  &  Zoon." 

This  view  is  not  shared  by  the  Circuit  Court  of  Appeals  in  the 
Sixth  Circuit  where  an  opposite  position  was  taken  in  Coca-Cola 
Co.  V.  Gay-Ola  Co.'' 

Recently  this  same  question  was  discussed  by  the  Appellate 
Division  in  New  York,  and  that  court  followed  the  ideas  of  the 
Seventh  Circuit  and  held:  ''It  is  not  the  province  of  a  court  of 
equity  to  aid  wrongdoers;  it  fulfils  its  mission  when  it  has  re- 
strained the  commission  of  a  wrong,  leaving  the  wrongdoer  to 
figure  out  for  himself  how  far  he  can  disregard  the  mandate  of  the 
court  and  the  requirements  of  a  clean  conscience."  Woodward,  J.^^ 

A  court  should  consider  all  the  defendant's  acts  together  in 
forming  its  opinion  of  his  purposes  and  their  results  to  the  plain- 
tiff, and  their  relation  to  his  rights.  The  court  should  not  be 
nice  in  limiting  the  scope  of  the  relief  granted,  because  some  of  the 
imitations,  if  practiced  singly  and  without  fraudulent  intent, 
might  not  constitute  unfair  competition.^^ 

§  369.  Decree  Correcting  a  Confusing  Use  of  Names  and 
Signs.  —  It  is  not  necessary  that  two  dealers,  whose  goods  or 
places  of  business  are  likely  to  be  confused  with  each  other  should 
state  in  their  advertising  and  signs  the  proprietorship  of  each 
store.  It  is  enough,  if  they  so  designate  their  own  as  to  show  to 
the  public  that  it  is  a  different  place  from  that  of  the  rival. 

^^  Mitchell   V.    Williams,    lOG   Fed.  "211  Fed.  942. 

168-1901   (C.  C.  A.  7th  Cir.);  Ster-  ^^  Oneida    Community    v.    Oneida 

ling  Remedy  Co.  v.  S-permine  Medi-  Game  Trap  Co.,  Inc.,  168  A.  D.  (N.  Y.) 

cai  Co.,   112  Fed.  1000-1901   (C.  C.  769-782-1915. 

A.  7th  Cir.).  ^^  Sterling    Remedy    Co.    v.    Sper- 

5*  Van  Houten  v.  Hooton  Chocolate  mine   Medical   Co.,    112   Fed.    1000- 

Co.,  130  Fed.  600-5-1904  (C.  C.  N.  J.).  1901  (C.  C.  A.  7th  Cir.). 


652  Remedies 

Where  defendant  built  a  store  next  door  to  plaintiff's  store,  and 
failed  to  distinguish  his  store  so  that  customers  were  induced  by 
his  signs  to  go  into  defendant's  store  when  they  were  seeking  that 
of  i)laintiff,  a  decree  ordering  defendant  to  ''place  signs  both  in- 
side and  outside  his  building  showing  to  the  world  the  proprietor- 
ship thereof"  was  "too  strict,  in  that  it  requires  the  proprietorship 
of  the  store  to  be  shown.  In  this  particular  we  think  the  decree 
should  be  modified  so  as  to  require  that  the  defendant  in  the  con- 
duct of  this  business  shall  distinguish  his  place  of  business  from 
that  in  which  the  plaintiff  is  carrying  on  his  business  in  some 
mode  or  form  that  shall  be  a  sufficient  indication  to  the  public 
that  it  is  a  different  place  of  business  from  that  of  the  plaintiff."  ^^ 

Such  an  order  should  not  provide  what  the  new  indicia 
should  be,  but  merely  direct  that  they  be  of  such  a  character  as 
not  to  confuse  and  mislead. 

§  370.  Injunctions  Against  Use  of  Color,  Size,  Form,  etc.  — 
WTiere  an  injunction,  if  couched  in  general  terms  might  appear 
to  forbid  the  exercise  of  some  universal  right,  such  as  the  use  of 
colors,  form,  size,  or  shape,  the  order  may  specifically  state  that 
it  does  not  forbid  the  making  and  selling  of  packages  or  goods 
of  the  same  size,  shape,  form,  color,  etc.,  as  plaintiff's  package 
or  goods,  provided,  they  are  so  made  as  not  to  cause  deceit  of 
purchasers.  The  Circuit  Court  of  Appeals,  Second  Circuit,  has 
met  the  plea  that  no  monopoly  can  be  given  of  color,  thus:  ^^ 
"Injunction  should  issue  against  putting  up  and  selling  or  offer- 
ing for  sale  the  particular  form  of  package  which  has  been  re- 
ferred to  in  the  bill  and  put  in  evidence  as  '  Defendant's  Second 
Package,'  or  any  other  form  of  package  which  shall,  by  reason 
of  the  collocation  of  size,  shape,  colors,  lettering,  spacing,  and 
ornamentation,  present  a  general  appearance  as  closely  resem- 
bling the  'Complainant's  Package,'  referred  to  in  the  bill  and 
marked  in  evidence,  as  does  the  said  'Defendant's  Second  Pack- 
age.' This  would  seem  to  be  sufficient;  but,  since  so  much  has 
been  said  about  the  impossibility  of  framing  any  decree  which 
would  prevent  the  sale  of  the  package  complained  of,  and  yet 
not  give  complainant  the  monopoly  of  yellow  paper  for  its  wrap- 
pers, the  following  clause  may  be  added:  This  injunction  shall 

"  Weinstock,  Lubin  &  Co.  v.  Marks,  ^^  N.  K.  Fairbank  Co.  v.  R.  W.  Bell 

109  Cal.  529-543-1895;  '^  L.    R.  A.      Mfg.  Co.,  77  Fed.  809-78-1896  (C.  C. 
182;  42  Pac.  142.  A.  2d  Cir.). 


Injunctions  Against  Use  of  Family  Name  653 

not  be  construed  as  restraining  defendant  from  selling  packages 
of  the  size,  weight,  and  shape  of  complainant's  package,  nor  from 
using  the  designation  'Buffalo  Soap  Powder,'  nor  from  making 
a  powder  having  the  appearance  of  complainant's  'Gold  Dust,' 
nor  from  using  paper  of  a  yellow  color  as  wrappers  for  its  pack- 
ages, provided  such  packages  are  so  differentiated  in  general 
appearance  from  said  'Complainant's  Package,'  that  they  are 
not  calculated  to  deceive  the  ordinary  purchaser." 

Where  color  is  adopted  in  part  as  a  means  of  aiding  the  con- 
templated fraud,  and  confusion  is  caused  by  its  use,  so  far  as  the 
defendant  cannot  safeguard  its  use,  it  may  not  use  the  color. 
This  is  the  substance  of  the  ruling  in  Coca  Cola  v.  Gaij  Ola.^^  The 
court  here  enjoined  the  defendant  from  selling  its  drink  in  the 
same  color  as  plaintiffs'  Coca  Cola  unless  some  other  means 
could  be  found  of  advising  the  public  of  the  identity  of  defend- 
ants' drink. 

§  371.  Injunctions  Against  Use  of  Family  Name.  —  The  law 
as  to  the  misuse  of  family  names  is  in  confusion.  The  principal 
difficulty  in  such  cases  is  as  to  the  form  of  remedy  which  will  be 
ordered  by  the  court.  For  a  discussion  of  the  fundamental  prin- 
ciples involved,  see  the  chapter  entitled  "Family  Names."  The 
discussion  here  will  be  limited  to  the  form  of  injunctions  granted 
in  these  cases. 

There  are  three  principal  ways  in  which  family  names  are  used 
in  business:  (a)  as  partnership  or  individual  names,  —  "Tiffany 
&  Co."  or  "William  Brown";  (6)  as  parts  of  a  corporate  name,  — 
"Higgins  Soap  Co.";  (c)  as  names  of  goods,  —  "Packard  Auto- 
mobile." The  remedies  granted  vary  according  as  the  cases  fall 
into  one  or  the  other  of  these  classes. 

If  the  name  is  used  in  the  first  way,  usually  the  injunctions  granted 
in  the  past  have  not  forbidden  the  use  of  the  name  entirely, 
but  have  directed  that  explanatory  or  identifying  phrases  be  used. 

The  use  of  the  explanatory  phrase,  in  trade-mark  law,  is  a  com- 
promise or  half  solution  of  a  vexing  question.  It  is  not  a  solution 
because  it  does  not  eliminate  confusion ;  business  demands  a  rem- 
edy in  these  cases  that  will  put  an  end  to  confusion  not  merely  ex- 
plain it.  When  the  defendant  is  found  to  be  guilty  of  such  use 
of  his  name  as  to  pass  off  his  goods  as  another's,  to  his  profit,  he 
is  guilty  of  fraud.  Yet  under  such  a  decree  he  is  permitted  to  con- 
69  6th  Cir.,  C.  C.  A.,  Mar.,  1914,  211  Fed.  942. 


654  Remedies 

tinue  his  fraudulent  acts,  provided  he  thereafter  explains  (to 
the  few  who  take  pains  to  read  the  explanation)  that  his  concern 
is  not  the  one  it  will  naturally,  from  the  name,  be  supposed  to  be.  ^" 

There  are  various  explanations  used  in  these  decrees,  or  in- 
junctive orders  such  as:  "not  connected  with,"  ''not  the  origi- 
nal," "not  the of ■ — ,"  etc.;  use  of  full  name  instead 

of  part  of  name,^^  " is  distinct  from ."  ^- 

If  the  name  is  used  as  part  of  a  corporate  name,  the  rule  is 
much  more  strict  (see  chapters  on  "Family  Names  "  and  "  Corpor- 
ate Names")  and  the  courts  often  forbid  any  use  whatever  of  the 
name  in  a  corporate  name  of  a  new  concern  if  confusion  will  result. 

Where  the  name  is  used  as  a  name  of  goods  it  is  usually  used 
in  a  nickname  sense.  "The  Ford"  is  a  short  description  of  the 
car  made  by  the  "Ford  Motor  Company."  By  such  use  of  the 
name  "Ford"  the  public  gives  to  the  "Ford  Motor  Co."  trade 
rights  in  that  name:  and  he  who  thereafter  uses  the  name 
as  a  name  for  his  goods  will  be  held  to  strict  account  if  confusion 
and  fraud  result. 

§  372.  Voluntary  Discontinuance  of  Infringing  Acts — Effect  of. 
—  The  fact  that  defendant  has  ceased  to  commit  infringing  acts 
is  no  reason  why  an  injunction  should  not  issue.^^  In  Richer  & 
Sons  V.  Leigh,^^"'  Patterson,  J.,  said: 

"It  may  be  that  the  defendant  will  voluntarily  desist  from 
infringing  the  rights  of  the  plaintiff  hereafter,  but  that  possibility 
or  even  probability  furnishes  no  ground  for  denying  the  plaintiff 
the  protection  of  an  injunction.  The  plaintiff  is  not  compelled 
to  rely  upon  the  defendant's  present  virtuous  intentions.  What 
the  defendant  did  was  a  wanton  invasion  of  the  plaintiff's  right 
as  well  as  a  deception  practiced  upon  the  public,  and  a  repetition 
of  such  acts  should  be  prevented  effectually  by  the  restraining 
order  of  a  court  of  equity." 

§  373.  Injunction  Against  the  Use  of  the  Name  of  a  Former 

^  Waterman  v.  Modern  Pen  Co.,  235  "  Clark  Thread  Co.  v.  Clark,  55  N.  J. 

U.  S.  88;  35  Sup.  Ct.  91-1914;  and  ar-  Eq.  658-1897;  37  Atl.  599;  Richer  v. 

tide  on  this  decision  by  John  H.  W.  Leigh,  74  A.  D.  N.  Y.  138;  U.  S.  Frame 

Guiorc,  10  lUinois  Law  Rev.  178.  &  Picture  Co.  v.  Horowitz,  51  Misc. 

«'  Watennan  v.  Modern  Pen  Co.,  235  101;  Dwinnell  v.  Co-operative  Co.,  148 

U.  S.  88;  35  Sup.  Ct.  91-1914.  Fed.  242;  Plant  v.  May,  153  Fed.  229; 

*2  Penberthy  Injector  Co.  v.  Lee,  120  Contra,  Van  Raalt  v.  Schneck,  170  Fed. 

Mich.  174-9-1899.  1021;  Dod^e  v.  Sewall,  142  Fed.  288. 

«^  74  App.  Div.  (N.  Y.)  138,  140. 


Use  of  Name  of  Former  Partner  655 

Partner  or  Former  Member  of  a  Corporation.  —  Where 
one  leaves  a  corporation  which  bears  his  name,  the  company 
retaining  the  right  to  continue  to  use  the  name,  an  injunc- 
tion against  him  for  unfair  use  of  his  name  should  forbid  its  use 
in  general  terms.  But  where  there  are  patents  bearing  his  name, 
that  name  may  be  used  to  show  that  goods  are  made  under  that 
patent  —  as  under  the  "Penberthy  Patent,"  or  the  "X  Patent," 
but  such  use  even  must  be  with  care  that  no  false  impression  is 
given  thereby.  In  Penberthy  Injector  Co.  v.  Lee,'^'^  the  court  de- 
creed 'Hhat  the  said  defendants,  severally  and  jointly,  and  the 
firm  and  corporation  known  as  the  Lee-Penberthy  Manufacturing 
Company,  their  counselors,  attorneys,  sohcitors,  agents,  serv- 
ants, and  workmen,  be,  and  they  are,  each  and  every  one  of 
them,  enjoined  from  the  use  of  the  name  'Penberthy'  in  the  firm 
or  corporate  name  in  any  way,  and  from  the  use  of  the  name 
'  Penberthy '  upon  their  product,  packages,  or  advertising  matter, 
or  advertisements.  But  said  defendants  may  indicate  that  their 
product  is  manufactured  under  W.  Penberthy's  patent,  if  such  be 
the  fact,  provided  that  with  each  and  every  such  statement,  and 
in  connection  therewith,  there  shall  be  also  indicated,  in  type 
equally  as  prominent,  that  'W.  Penberthy  is  distinct  from,  and 
has  no  connection  with,  the  original  Penberthy  Injector  Com- 
pany.' " 

An  injunction  protecting  a  family  name,  which  is  a  part  of 
a  corporate  name  and  which  has  been  purchased  with  the  good- 
will of  that  corporation,  should  forbid  the  use  of  the  family  name, 
either  alone  or  in  combination,  in  a  corporate  name,  on  goods  or 
in  advertisements  unless  accompanied  by  information  that  the  one 
using  it  is  not  the  person  that  originally  used  it  or  his  successor, 
and  that  the  article  is  not  the  product  of  that  first  user  of  the 
name.^^  The  rule  laid  down  in  this  case  should  be  considered  in 
connection  with  the  rule  that  the  incorporators  of  a  corporation 
may  not  adopt  a  name  that  will  cause  confusion.^" 

The  decree  may  forbid  the  use  of  a  name  unless  information 
that  the  concern  using  it  is  not  the  same  concern  which  has  been 

6^120   Mich.    174-79-1899;   78   N.          ^^  Higgins  v.  Higgins  Soap  Co.,  lU 

W.  1074.  N.  Y.  462-1895,  and  similar  cases  and 

^^  Herring-Hall-Marvin  Safe  Co.  v.  is    not  now   regarded   as   sufficiently 

HalVs  Safe  Co.,  208  U.  S.   554-60-  drastic  at  least,  so  far  as  corporations 

1908.  are  concerned. 


656  -  Remedies 

accustomed  to  use  it,  is  given  every  time  it  is  used.  In  Hall's 
Safe  Co.  V.  U err ing-H all-Marvin  Safe  Co.^'^  the  form  of  the  in- 
junction was  as  follows:  ''The  defendant,  the  Hall's  Safe  Com- 
pany, *  *  *  are  perpetually  enjoined  from  carrying  on  the 
safe  or  vault  business  in  the  name  of  the  Hall's  Safe  Company, 
or  any  other  name  having  shnilarity  to  the  name  Hall's  Safe  & 
Lock  Company,  without  also  giving  information  to  the  public  that 
it  is  not  the  business  fonnerly  carried  on  by  the  Hall's  Safe  & 
Lock  Company,  and  from  marking,  advertising,  or  otherwise 
designating  its  safes  and  vaults  as  the  products  of  the  Hall's 
Safe  &  Lock  Company  or  its  successors  in  business,  or  pretending 
that  it  is  carrying  on  the  business  started  by  Joseph  Hall,  and 
continued  by  the  Hall's  Safe  &  Lock  Company,  and  from  inter- 
fering in  any  manner  with  the  exclusive  right  of  the  complainant 
to  possess  and  enjoy  the  good-will  acquired  by  the  Hall's  Safe  & 
Lock  Company,  and  from  using  the  trade-name  of  said  last- 
named  company  without  at  the  same  tune  so  qualifying  such 
trade-name  as  to  show  that  the  trade-name  used  is  not  the  one 
fonnerly  used  to  designate  the  products  of  the  Hall's  Safe  &  Lock 
Company"  (p.  44).    This  decree  has  been  affirmed.^^ 

"  146  Fed.  37-1906  (C.  C.  A.  6th          e*  208  U.  S.  554-1908. 
Cir.);  appealed  in  208  U.  S.  554-1908. 


CHAPTER  XXIV 

Defenses 

Section  374.  The  defense  that  the  plaintiff  and  defendant  are  not  in  com- 
petition with  each  other. 

375.  The  defense  that  the  name,  mark,  form,  shape,  or  other  device  in 

question  has  not  been  exclusively  used  by  the  complainant,  but 
is  in  common  use. 

376.  The  defense  that  the  defendant's  article  is  as  good  as  the  plain- 

tiff's. 

377.  The  defense  that  the  defendant  has  no  intent  to  pass  off  his  goods 

as  plaintiff's  goods. 
373.  The  defense  that  the  goods  were  not  marked  with  any  spurious 
marks  or  names. 

379.  The  defense  that  defendant's  marks  differ  sufficiently  from  com- 

plainant's to  be  capable  of  registration  as  distinct  marks. 

380.  The  defense  that  representations  objected  to  by  the  plaintiff  are 

true. 

381.  The  defense  that  the  deception  is  due  not  to  the  defendant,  but 

to  a  jobber  or  retailer  or  other  purchaser  from  the  defendant. 

382.  The  defense  that  defendant  was  only  the  maker  of  the  label  or 

container  complained  of,  and  was  not  responsible  for  its  ultimate 
use  by  him  for  whom  it  was  made. 

383.  The  defense  that  defendant  was  acting  only  as  agent  for  another, 

and  received  none  of  the  profits. 

384.  The  defense  that  complainant's  title  was  not  properly  established. 

385.  The  defense  that  the  offense  is  too  trivial  for  the  court  to  notice. 

386.  The  defense  that  plaintiff's  goods  are  worthless  or  useless. 

387.  The  defense  that  defendant's  name  is  two  or  more  words,  while 

plaintiff's  is  one  and  hence  different. 

388.  The  defense  that  plaintiff  has  acted  unfairly  toward  third  persons 

not  connected  with  the  suit  at  bar. 

389.  The  defense  that  plaintiff  is  an  impostor  and  deluding  the  public. 

390.  The  misrepresentation  must  be  as  to  the  subject-matter  of  the 

suit. 

391.  The  defense  that  plaintiff  is  making  misrepresentations  in  his  own 

business. 

392.  Misrepresentation  usually  but  not  always  an  affirmative  defense. 

393.  Misrepresentations  by  plaintiff  discontinued  before  suing. 

394.  Misrepresentations  must  be  intentional  and  material. 

395.  Misrepresentations  as  to  ingredients  and  the  nature  and  effect  of  a 

medical  preparation. 

657 


658  Defenses 

Section  300.  Misrepresentations  must  be  us  to  ingredients  that  are  essential. 

397.  Extravagant  claims  as  to  efficacy  of  medicines. 

398.  Misrepresentations  as  to  manufacture,  place  of  manufacture,  or 

origin  of  goods. 

399.  Misrepresentation  as  to  maker  of  goods. 

400.  Continuing  use  of  name  of  predecessor. 

401.  Misrepresentation  as  to  unessential  details. 

402.  Misrepresentations   imp(Iying   a   claim   of   monopoly,  —  Use   of 

term  "Patented." 

403.  Misrepresentation  by  use  of  term  "Copyrighted  "  or  "  Registered." 

404.  Misrepresentation    by   laudatory   expressions   and    exaggerated 

trade  phrases. 

405.  Miscellaneous  cases  of  misrepresentation  deemed  harmless. 

406.  Claiming  falsely  to  be  a  corporation. 

407.  Use  of  term  "Established  in." 

408.  Abandonment. 

409.  Kinds  of  laches. 

410.  Laches  in  the  sense  of  mere  delay. 

411.  First  user  of  mark  may  revoke  license  implied  from  laches. 

412.  Presumption  of  acquiescence  where  an  exclusive  right  exists. 

413.  Material  delay  bars  right  to  an  accounting  of  profits, 

414.  Laches  may  bar  right  to  order  for  destruction  of  offending  goods. 

415.  Laches  which  bars  right  to  preliminary  injunction. 

416.  Acquiescence,  in  the  sense  of  inaction  upon  which  others  have 

the  right  to  rely. 

417.  Test  by  which  to  determine  acquiescence. 

418.  Defense  that  plaintiff  violated  some  Federal  statute  regarding 

restraint  of  trade  or  monopoly. 

Various  matters  are  sometimes  set  up  in  defense  which  hardly 
require  separate  consideration  here,  since  the  questions  involved 
in  such  pleas  have  already  been  discussed  in  previous  chapters. 
The  defenses  now  referred  to,  attack  the  complainant's  right  to 
sue,  on  account  of  the  alleged  absence  of  one  or  other  of  the  ele- 
ments of  a  cause  of  action  for  unfair  competition.  The  follow- 
ing are  examples  of  defenses  of  this  sort. 

§  374.  The  Defense  that  the  Plaintiff  and  Defendant  are  not 
in  Competition  with  Each  Other.  —  It  is  a  valid  defense  to  an  ac- 
tion of  unfair  competition  that  the  defendant  is  not  in  the  same 
line  of  business  as  the  plaintiff,  and  hence  is  not  in  direct  competi- 
tion with  him.  If  not  in  direct  competition,  the  defendant  may 
commit  lawfully  various  acts  which  between  direct  competitors 
would  be  unfair. 

This  question  as  to  when  competitive  conditions  exist  is  not 
easy  of  solution  in  many  cases.    The  usual  test  is  to  decide 


Defense  of  Non-Exclusive  Use  by  Complainant    659 

whether  or  not  the  goods  sold  by  the  respective  parties  are  of  the 
"same  descriptive  quahties"  as  the  phrase  goes:  That  is  to  say, 
are  they  so  sufficiently  similar  as  to  cause  the  name  used  by  the 
defendant  upon  his  goods  to  convey  the  impression  that  they 
came  from  the  plaintiff.^  There  are  cases  that  hold  that  it  is 
unlawful  to  copy  or  imitate  the  name  of  a  corporation  whether 
the  two  companies  compete  or  not. 

It  is  important  to  show  whether  the  goods  of  the  parties  are 
sold  in  the  same  stores  in  the  community  or  in  stores  of  the  same 
character,  and  in  big  stores  in  the  same  departments.  Each 
case  is  a  law  unto  itself  on  this  question.  Precedents  are  of 
little  value.  Commercial  conditions  which  rule  in  the  sale  of 
the  goods  in  question  are  all  important. 

§  375.  The  Defense  that  the  Name,  Mark,  Form,  Shape, 
or  Other  Device  in  Question  has  not  been  Exclusively  Used  by 
Complainant,  but  is  in  Common  Use.  —  Here  certain  distinc- 
tions are  to  be  made.  If  that  which  the  complainant  alleges 
belongs  to  him  exclusively  has  really  been  common  property 
all  along,  his  case  obviously  fails.  But  it  is  not  enough  that 
one  feature  of  the  goods  in  question,  or  of  their  dress,  taken  sep- 
arately, is  in  common  use,  because  the  combination  of  these  fea- 
tures may  produce  a  general  effect,  which  distinguishes  the  goods 
to  the  public  eye,  so  that  defendant  has  in  fact  so  used  even  these 
common  features  as  to  cause  unfair  competition.  This  has 
already  been  dealt  with  under  the  chapter  on  "Dress."  See  also 
chapter  on  "Simulation  of  Articles  Themselves." 

The  general  rule  in  such  cases  is  illustrated  by  the  following 
statement  in  Scriven  v.  North:'^  "A  stamp  with  the  words  printed 

1  Elgin   Nat.    Watch   Co.   v.    Love-  complainant  does  not  deal,  and  there- 

land,  132  Fed.  41-1904  (C.  C.  N.  D.  fore  no  injury  results  or  can  result  to 

Iowa).     "It  is  urged  that  the  busi-  it.     It  is  true  that  complainant  could 

ness  of  the  defendants  as  conducted  not  complain  of  the  use  of  the  word 

by  them  is  not  in  competition  with  'Elgin'  by  a  manufacturer  or  vendor 

that  of  the  complainant;  that  com-  of  some  product  not  of  the  same  gen- 

plainant  manufactures  watch  move-  eral  kind  as  the  complainant's.    Such 

ments  only;  that  defendants  do  not  a  business  would  not  be  in  competition 

manufacture  watch  movements,   but  with  it"  (p.  51).     Held  unfair  compc- 

confine    their    business    to    sales    of  tition. 

watches  upon  mail  orders  only,  and  as-         ^  134  Yed.  366-1904  (4th  Cir.) ;  67 

sortments  of  jewelry,  silverware,  and  C.  C.  A.  348. 
other  goods  of  a  cheap  class,  in  which 


660  Defenses 

in  straight  lines  would  identify  the  defendants'  goods  as  easily 
as  the  oval  stamp.  Granted  that  the  oval  form  is  in  common 
use,  the  straight  is  equally  common,  and  was,  in  fact,  used  for- 
merly by  defendants  and  complainants  alike;  and  when  the 
proof  shows,  as  it  does,  that  after  the  complainants  adopted  the 
oval  form  the  defendants  adopted  a  stamp  resembling  it,  when 
they  show  no  good  reason  for  such  change,  or  any  reason  at  all, 
except  that,  being  a  common  form,  they  had  the  right  to  use  it 
as  well  as  complainants,  and  we  find,  as  we  do,  that  there  is  a  re- 
semblance between  the  two,  and  no  reason  appears  for  such  re- 
semblance, except  that  it  was  calculated  to  deceive,  we  must 
conclude  that  it  was  adopted  for  that  purpose. "  (p.  375) 

The  mere  fact  that  many  others  besides  the  defendant  have 
adopted  and  are  using  distinctive  features  originated  by  the 
complainant,  in  other  words,  that  there  are  many  other  in- 
fringers, is  no  defense  unless  the  originator  has  lost  his  rights  by 
abandonment  or  dedication  to  the  public,  or  by  long  continued 
acquiescence  in  public  use. 

To  establish  a  cause  of  action  of  unfair  competition  it  is  not 
necessary  to  prove  an  exclusive  right  in  plaintiff.  The  issue  is 
one  not  of  title  or  exclusive  right  but  rather  of  representation, 
viz..  What  does  the  mark  as  used  by  plaintiff  represent  or  mean 
to  the  public,  and  what,  in  contrast,  does  the  mark  used  by  the 
defendant  represent?  If  the  mark  used  by  the  defendant  is  taken 
by  any  substantial  number  of  persons  of  the  public  as  indicating 
that  the  goods  come  from  the  plaintiff,  then  there  is  unfair  compe- 
tition. 

It  is  true  then  that  the  use  by  the  plaintiff  of  a  common  form, 
or  shape,  or  size,  which  ordinarily  anyone  may  use,  may  have  the 
effect  of  preventing  the  defendant  from  using  it,  where  it  is  not 
essential  to  the  latter's  purpose,  or  where  it  is  adopted  with  the 
purpose  of  deceiving. 

Speaking  of  the  method  used  by  defendants  in  making  their 
goods,  the  court  said  in  Chickering  v.  Chickering  &  So7is,^  that 
it  was  defendants'  duty  "to  distinguish  their  pianos  from  the 
'Chickering'  pianos,  and  they  cannot  plead,  in  avoidance  of 
that  duty,  that  others  of  different  names  used  that  style  of  letter- 
ing (old  English).     Their  duty  was  to  distinguish,  not  to  imitate." 

3 120  Fed.  69-73-1903  (C.  C.  A.  7th  Cir.).  See  later  decision  at  198 
Fed.  958. 


Defendant's  Article  as  Good  as  Plaintiff'^       661 

§  376.  The  Defense  that  the  Defendant's  Article  is  as  Good 
as  the  Plaintiff's.  —  It  is  obvious  on  principle,  and  well  settled 
by  the  decisions,  that  it  is  no  defense  that  defendant's  article  is 
as  good  as,  or  even  better  than,  complainant's.  The  defendant 
must  offer  his  goods  for  what  they  are,  and  trust  to  their  intrinsic 
merits  to  win  a  market.  The  wrong  to  complainant,  through 
diverting  trade  intended  for  him,  is  evident,  regardless  of  the 
quality  of  defendant's  goods.  The  public  in  preferring  to  buy 
the  plaintiff's  goods  may  be  losing  the  chance  to  get  in  the  de- 
fendant's product  a  better  article  at  a  less  price.  Still  the  pubhc 
is  entitled  to  get  just  what  it  asks  for.  The  court  will  not  pro- 
tect in  anyone  the  opportunity  to  deceive  the  public  even  for  its 
own  good. 

In  the  first  recorded  cases  relating  to  trade  names,  the  courts 
based  their  interference  on  the  ground  that  it  was  unlawful  to 
sell  inferior  goods,  giving  out  that  they  were  goods  of  a  known 
brand  with  which  the  public  associated  a  particular  grade  of 
merit  or  quality.  In  most  cases,  goods  made  as  copies  of  other 
goods  are  in  fact  inferior.  But  Blofeld  v.  Payne, "^  a  case  at  law, 
and  Edelsten  v.  Edelsten,^  a  case  in  equity,  long  ago  held  it  to 
be  ''an  actionable  injury  to  pass  off  goods  known  not  to  be  plain- 
tiff's,  as  and  for,   the  plaintiff's,   even   though  not  inferior."^ 

M  B.  &  Ad.  410-1833,  an  action  held  that  the  plaintiff  was  entitled  to 

of  the  case.     The  plaintiff  was  the  recover  some  damages  by  reason  of 

manufacturer  of  a  metalhc  hone  for  the  fraudulent  use  of  his  wrapper,  and 

sharpening  razors,  which  he  wrapped  refused  to  grant  a  rule  to  show  cause, 

up  in  envelopes  containing  directions  The  case  decides  that  it  is  no  answer 

for  its   use   and   other  matters;   the  to  such  a  suit  to  show  that  the  simu- 

same  being  intended  and  serving  to  lated  article  is  as  good  as  the  genuine 

distinguish  his  hones  from  those  of  manufacture, 
others.      The    defendants    had    ob-         « 1  De  G.  J.  &  S.  185-1863. 
tained  some  of  the  plaintiff's  wrap-         ^  See  Singer  Mfg.   Co.  v.  Loog,  8 

pers  and  used  them  wrongfully  upon  App.  Cas.  15-1882,  at  p.  29;  Prince 

hones  of  their  own  manufacture,  and  Mfg.   Co.   v.  Prince's  Metallic  Paint 

sold  such  hones  as  and  for  the  plain-  Co.,   135  N.  Y.  24-1892;  31  N.  E. 

tiff's  for  their  own  gain.     No  proof  990;  17  L.  R.  A.  129,  note.    Owners 

was    given    of    any    actual    damage,  of  land  on  which  was  Prince's  iron- 

The  jury  found  for  the  plaintiff  with  ore    mine    made    "Prince's    Metallic 

one    farthing    damages,    and    stated  Paint."    Plaintiff,  who  was  successor 

that  they  thought  that  the  defend-  of    original    owners,    represented    to 

ant's  hones  were  not  inferior  to  the  public  that  that  name  meant  paint 

plaintiff's.      The     defendants      then  made    from    ore    from    the    original 

moved  for  a  nonsuit,  but  the  court  tract  and  later  appHed  that  name  to 


662       *  Defenses 

Cheapness  is  not  an  offense,  —  there  are  markets  where  cheap 
articles  are  more  in  demand  than  costly  ones.  Every  man  has 
a  complete  right  to  make  as  cheap  an  article  as  he  will,  but  no 
person  has  the  right  to  make  or  sell  a  cheap  or  a  costly  article, 
dressed  in  the  guise  of  a  different  article  made  by  another,  and  so 
deceptively  palm  it  off.  This  is  an  injury  both  to  the  honest 
manufacturer  and  to  the  public.'^ 

§  377.  The  Defense  that  the  Defendant  has  no  Intent  to 
Pass  Off  His  Goods  as  Plaintiff's  Goods.  —  The  contention  that 
the  defendant  had  no  intention  of  passing  off  his  goods  as  the 
goods  of  the  plaintiff  is  no  defense,  if,  in  fact,  he  was  acting  un- 
fairly. This  is  true,  although  originally  the  defendant  thought 
he  had  a  right  to  so  sell  his  goods,  and  did  it  honestly.  Intent 
not  to  injure  a  rival  is  not  an  excuse.^  Proof  of  good  intentions 
of  a  defendant  does  not  obviate  confusion  of  goods  or  repair  the 
injury  which  the  plaintiff  is  suffering  from  the  defendant's  well- 
meaning  but  damaging  acts.  The  object  of  the  court  is  not  to 
analyze  the  motives  and  feelings  of  either  party  but  to  protect 
the  good-will  of  the  plaintiff's  business  (if  there  be  confusion  and 
passing  off)  from  injury.  Further  cases  on  this  plea  will  be 
found  in  the  chapter  on  ''Intent." 

§  378.  The  Defense  that  the  Goods  were  not  Marked  with 
any  Spurious  Marks  or  Names.  —  It  is  not  a  defense  to  an  action 
for  illegal  use  of  a  trade-mark  or  name  that  no  spurious  mark  is 
put  on  the  goods  themselves  by  the  defendant.  Where  the  mis- 
representation complained  of  was  done  ''by  an  advertisement 
or  misrepresentation  in  gross,"  to  use  Lord  Cairns'  phrase,  it  may 

paint  made  of  ore  from  other  tracts,  swer  to  the  charge  of  using  a  false 

"The   jurisdiction   of   equity    to   re-  and  simulated  brand  that  the  article 

strain    the    infringement    of    trade-  covered  by  the  brand  is  of  a  superior 

marks  is  founded  upon  the  right  of  quality  to  that  which  the  purchaser 

property    in    the    plaintiff    and    its  desired  to  buy.      You  may  not  de- 

fraudulent  invasion,"  etc.  (id.  p.  37).  ceive  a  purchaser  for  his  own  bene- 

The   fact  that  the   products   of  the  fit"  (id.  p.  848). 

mines,  other  than  the  original  mine,  ^  Shepard  v.  Stiiart,  Am.  T.  M.  Cas. 

which  were  used  were  equal  to  the  (Price  &  S.)  193;  1  B.  Phil.  117;  Hier 

original  mine,  held  no  excuse.  v.    Abrahams,    82    N.    Y.    519-1880; 

T  Scrivm  v.  North,    134  Fed.   366-  Williams  v.   Brooks,   50  Conn.   278- 

73-1904;  67  C,  C.  A.  348;  Pillshury  1882;  Liggett  &  Myer  Tobacco  Co.  v. 

V.    PilUbury-Washburn    Flour    Mills  //?/m;s,  20  Fed.  883-1884  (D.  C.  Ark.); 

Co.,  64  Fed.  841-1894  (C.  C.  A.  7th  Goto  v.  El  Modelo  Cigar  Mfg.  Co.,  6 

Cir.).     From  opinion:  "It  is  no  an-  L,  R.  A.  823-1889,  25  Fla.  886. 


Defense  that  Defendant's  Marks  Differ  Sufficiently    663 

be  "quite  as  injurious  in  operation  as  the  same  representation 
made  upon  the  articles  themselves."  ^  This  defense  is  a  stock 
plea  in  substitution  cases.  There  is  no  more  direct  form  of 
unfair  competition  than  oral  representation  of  one  man's  goods 
as  those  of  another.  The  same  representation  by  copying  of 
labels  or  appearance  or  what  not  is  merely  a  more  subtle  form 
of  this  grossly  fraudulent  act. 

§  379.  The  Defense  that  Defendant's  Marks  Differ  Suffi- 
ciently from  Complainant's  to  be  Capable  of  Registration  as 
Distinct  Marks.  —  Tests  applicable  to  questions  of  statutory 
registration  do  not  control  questions  of  unfair  competition. 
There  is  no  statute  in  this  country  to  compel  the  owner  of  a  name 
or  mark  to  register  it.  It  may  be  absolutely  clear  that  it  can  be 
registered,  yet  he  may  prefer  not  to  do  that.  Is  he  by  this  de- 
cision to  be  barred  from  showing  that  a  rival  is  making  false 
representations  injurious  to  him?  It  would  amount  to  this  were 
this  defense  available,  for  much  damage  may  be  done  by  names 
quite  different  and  by  marks  which  are  very  dissimilar.  This 
defense  is  practically  an  attempt  to  define  what  similarity  is.  To 
do  this  would  tie  the  court  to  a  definition,  which  would  be  a  se- 
rious error. 

In  Mitchell  v.  Henry, ^°  it  was  contended  that  defendant 
could  register  his  mark,  and  hence  there  was  no  unfair  competi- 
tion. Said  the  court:  "The  question  is  not  simply  whether  or 
no,  putting  the  plaintiffs'  and  defendants'  marks  side  by  side, 
one  might  be  so  different  from  the  other  as  to  be  capable  of  regis- 
tration as  a  distinct  mark,  or  whether  the  plaintiffs  have  them- 
selves registered  trade-marks  which  have  no  greater  distinction 
between  them  than  the  distinction  between  the  mark  of  the 
plaintiffs  and  that  of  the  defendants,  for  slight  distinctions  be- 
tween the  plaintiffs'  marks  may  distinguish  different  classes  of 
the  plaintiffs'  goods,  but  the  question,  in  my  opinion,  is  whether 
the  defendants  are  so  selling  their  goods  as  to  pass  them  off  as 
the  goods  of  the  plaintiffs." 

§  380.  The  Defense  that  Representations  Objected  to  by 
Plaintiff  are  True.  —  The  defense  is  sometimes  set  up  that  the 
representation  by  the  defendant,  to  which  the  plaintiff  objects, 
is  a  true  statement,  and  the  defendant  is  therefore  not  in  the 

9  Si7iger  Man.  Co.  v.  Wilson,  L.  R.  'o  15  Ch.  Div.  181-93-1880. 

3  App.  Cas.  376-1877,  at  p.  389. 


GG4  Defenses 

wrong,  because,  to  use  the  words  of  the  Supreme  Court  of  the 
United  States :"  Equity  will  not  enjoin  against  telling  the  truth."  '^ 
This  statement  has  been  qualified  by  a  Missouri  court,  which 
says  that  this  "remark  must  be  limited  to  cases  where  the  truth 
is  honestly  told,  and  can  have  no  application  to  a  case  where  it  is 
told  with  intent  to  deceive  and  does  deceive."  ^^  The  truth  can 
be  told  dishonestly  with  fraudulent  intent.  It  might  be  said 
that  the  principal  mission  of  the  law  of  unfair  competition  is  to 
prevent  unscrupulous  rivals  from  telling  the  truth  dishonestly 
and  with  intent  to  injure.  The  malicious  trade  rival  tries  to  tell 
the  truth  about  his  own  name,  about  the  place  where  he  manu- 
factures his  goods,  about  his  patents,  oftentimes  with  the  sole 
idea  of  so  telling  it  as  to  injure  the  business  of  his  competitor. 
This  the  law  does  not  allow.  In  unfair  competition  cases,  literal 
or  formal  truth  is  not  enough.  The  question  is,  what  impres- 
sion will  be  made  on  the  public  mind?  ^^ 

§  381.  The  Defense  that  the  Deception  is  Due  not  to  the 
Defendant,  but  to  a  Jobber  or  Retailer  or  Other  Purchaser 
from  the  Defendant. —  It  is  well  settled  that  a  manufacturer  who 
puts  in  the  hands  of  the  immediate  purchaser  the  means  of  de- 
ceiving the  ultimate  purchaser  is  chargeable  with  unfair  com- 
petition. The  possibility  that  the  retailer  may  not  be  honest  in 
such  matters  must  be  taken  into  account  by  the  manufacturer. 
The  courts  would  be  without  power  to  give  aid  in  a  large  number 
of  these  cases  were  their  right  to  grant  relief  limited  to  cases  where 
the  immediate  customer  is  deceived.  Whether  ''the  trade " — the 
jobbers  and  retailers  —  are  deceived  is  not  the  question.  English 
decisions  are  most  emphatic  on  this  point.  ''It  was  argued  that 
the  defendant  ^2"  had  nothing  to  do  with  the  deception  of  the  pub- 
He.  The  answer  is  obvious.  Every  person,  who,  intending  to 
buy  a  bottle  of  the  plaintiff's  sauce,  gets  instead  a  bottle  of  the  de- 
fendants' is  a  customer  taken  from  the  plaintiff  by  this  deceit; 
and  if  this  is  extensively  done,  the  damage  to  the  plaintiff's  trade 
would  be  serious."  ^'^  "No  man  is  entitled  to  represent  his  goods 
"  Canal  Co.  v.  Clark,  13  Wall.  (80  "«  The  word  in  the  opinion  is  "de- 
U.  S.)  311-1871,  at  p.  327.  fendant,"  probably  error  for  "  plain- 

ly American    Brewing    Co.    v.    St.      tiff." 
Louis  Brewing  Co.,  47  Mo.  App.  14-         "  Powell    v.    Birmingham    Vinegar 
1891,  at  p.  20.  Brewery  Co.,  2  Ch.  54-83-1896. 

"AT.  K.  Fairbank  Co.  v.  Swift  & 
Co.,  64  111.  App.  479-90-1896. 


Deception  Due  to  Jobber  or  Retailer  665 

as  being  the  goods  of  another  man;  and  no  man  is  permitted  to 
use  any  mark,  sign  or  symbol,  device  or  other  means,  whereby, 
without  making  a  direct  false  repre.sentation  himself  to  a  pur- 
chaser who  purchases  from  him,  he  enables  such  purchaser  to  tell  a 
lie  or  to  make  a  false  representation  to  somebody  else  who  is  the  ul- 
timate customer.  That  being,  as  it  appears  to  me,  a  comprehen- 
sive statement  of  what  the  law  is  upon  the  question  of  trade-mark 
or  trade  designation,  I  am  of  the  opinion  that  there  is  no  such 
thing  as  a  monopoly  or  a  property  in  the  nature  of  a  copyright,  or 
in  the  nature  of  a  patent,  in  the  use  of  any  name.  Whatever  name 
is  used  to  designate  goods,  anybody  may  use  that  name  to  desig- 
nate goods;  always  subject  to  this,  that  he  must  not,  as  I  said, 
make  directly,  or  through  the  medium  of  another  person,  a  false 
representation  that  his  goods  are  the  goods  of  another  person. 
That  I  take  to  be  the  law."  '' 

American  cases  are  numerous  which  are  equally  emphatic. 
"Undoubtedly,  no  one  who  bought  from  defendant  was  ever 
deceived.  No  effort  was  ever  made  to  delude  the  trade  into  the 
belief  that  defendant's  salesmen  were  selling  complainant's 
goods.  But  equity  regards  the  consumer  as  well  as  the  middle- 
man. It  is  to  him,  more  than  to  the  jobber  or  wholesale  pur- 
chaser, that  the  various  indicia  of  origin  with  which  merchants 
dress  up  their  goods  appeal ;  and  courts  will  not  tolerate  a  decep- 
tion devised  to  delude  the  consuming  purchaser  by  simulating 
some  well-known  and  popular  style  of  package.  *  *  *  We  have, 
then,  the  case  of  a  manufacturer  who  is  careful  always  to  sell  its 
goods  as  its  own,  but  who  puts  them  up  in  a  style  of  package  so 
similar  to  that  used  by  one  of  its  competitors,  earher  in  the  market, 
that  unscrupulous  dealers,  who  purchase  from  the  manufacturer  in 
order  to  sell  at  retail  to  consumers,  are  enabled  to  delude  a  large 
number  of  such  retail  purchasers  by  palming  off  upon  them  the 
goods  of  the  manufacturer  as  those  of  its  competitor.  That  this 
is  unfair  competition  seems  apparent,  both  on  reason  and  author- 
ity." '' 

''The  testimony  is  abundant  that  the  goods  of  defendants  were 

15  Singer  Mfg.  Co.  v.  Loog,  18  Ch.  v.  Richardson  &  Co.,  45  L.  T.  N.  S. 

Div.  395-412-13-1880.  54-1881;  Brown  v.  Mercer,  37  N.  Y. 

'«iV.   A'.   Fairbank   Co.   v.   R.    W.  Super.  Ct.  2Q5-1874;  Singer  Mfg.  Co. 

Bell  Mfg.  Co.,  77  Fed.  869-78-1896  v.  Loog,  18  Ch.  Div.  395-1880;  Lever 

(C.  C.  A.  2d  Cir.),  citing  Read  Bros.  y.  Goodwin,  36  Ch.  Div.  1-1887. 


666  Defenses    • 

sold  as  Scriven's,  and  there  is  sufficient  resemblance  in  make 
and  marks  to  make  that  deception  easy  and  practicable,  and 
we  do  not  think  it  is  a  sufficient  answer  to  say  that  there  are 
differences  which  a  careful  examination  would  disclose,  or  that 
"the  retailer  to  whom  the  manufacturer  sells  is  not  himself  de- 
ceived, if  the  goods  are  put  up  in  such  a  way  and  marked  in  such 
a  way  that  the  ultimate  purchaser  could  be  deceived  into  buying 
them  as  Scriven's  goods,  or  that  the  manufacturer  should  not 
be  held  to  liability  because  the  shopkeeper  to  whom  he  sells 
practices  a  fraud  upon  his  customers. 

The  question  as  to  the  measure  of  such  liability  and  the  ex- 
tent of  it  might  arise  upon  an  accounting,  but  if  he  knowingly 
puts  it  in  the  power  of  the  shopkeeper  so  to  deceive  he  should 
be  enjoined.  The  power  of  the  courts  is  not  usually  invoked  for 
the  protection  of  the  strong  and  shrewd,  who  commonly  can  take 
care  of  themselves.  It  is  the  ignorant  and  the  unwary  that  gen- 
erally demand  their  protection,  and  courts  will  be  without  power 
to  afford  a  remedy  in  most  cases  if  their  right  to  grant  relief 
was  limited  to  those  cases  where  the  immediate  customers  were 
deceived  "  (p.  375).^'^  That  fact  that  the  immediate  vendees  of 
one  who  infringes  are  themselves  not  deceived  is  no  consequence. 
The  offense  is  none  the  less  an  offense  because  the  original  vend- 
ors and  vendees  may  all  be  parties  to  it.^^ 

It  has  been  held  that  two  frauds  are  perpetrated  in  these  cases, 
first  on  the  ultimate  buyer  and  second  on  the  other  manufac- 
turer, who  loses  trade  by  it.  "The  simplest  case  is  where  the 
seller  misrepresents  to  the  buyer  that  the  goods  which  are  being 
offered  for  sale  are  the  goods,  not  of  the  person  who  made  them, 
but  of  some  other  manufacturer.  That  is  a  case  merely  between 
the  buyer  and  seller.  Then  comes  the  case  where  the  manufac- 
turer, by  devices  which  are  to  accompany  the  goods  on  their  sale 
in  the  market,  gets  them  up  in  such  a  form  as  to  be  calculated  to 
deceive  the  ultimate  buyer  into  the  behef  that  the  goods  which 
he,  the  manufacturer,  is  putting  on  the  market  are  the  goods  of 
some  other  maker.  Here,  generally  speaking,  a  double  fraud  is 
committed;  first,  there  is  the  fraud  which  is  perpetrated  on  the 

"Scriven  v.  North,  134  Fed.  366-  Cir.);  17  L.  R.  A.  354.    See  also  to 

1904;  67  C.  C.  A.  348.  same  effect  Erioch  Morgan's  Sons  Co. 

18  Le   Page   Co.    v.    R^issia   Cement  v.  Whitlier-Coburn  Co.,  118  Fed.  657- 

Co.,  51  Fed.  941-1892  (C.  C.  A.  1st  1892  (C.  C.  N.  D.  Cal.). 


Defendant  Only  Maker  of  Label  Complained  of    G67 

ultimate  buyer;  and,  secondly,  there  is  a  fraud  perpetrated  on 
the  other  manufacturer,  who  loses  part  of  his  trade.  In  this 
class  of  cases  the  trade  is  seldom  deceived,  the  retail  dealers  know 
from  whom  they  are  buying,  and  if  there  is  a  fraudulent  device 
they  are  rarely  taken  in  by  it.  But  in  such  a  case  the  manu- 
facturer puts  an  instrument  of  fraud  into  their  hands.  Now  it  has 
been  said  more  than  once  in  this  case,  that  the  manufacturer 
ought  not  to  be  held  liable  for  the  fraud  of  the  ultimate  seller — 
that  is,  the  shopkeeper  or  the  shopkeeper's  assistant;  but  that  is 
not  the  true  view  of  the  case."  ^^    (Upheld  on  appeal.) 

§  382.  The  Defense  that  Defendant  was  Only  the  Maker  of 
the  Label  or  Container  Complained  of,  and  was  not  Responsible 
for  Its  Ultimate  Use  by  Him  for  Whom  It  was  Made.  —  A  printer, 
lithographer,  or  maker  of  bottles  or  packages,  who  furnishes  a 
manufacturer  with  material  adapted  to  be  used  by  him  in  unfair 
competition,  is  himself  liable,  if,  under  the  circumstances,  he 
is  chargeable  with  notice  of  the  intended  use. 

Complainant  brought  a  suit  for  infringement  of  a  trade-mark, 
against  the  sellers  of  goods.  In  this  suit,  on  stipulation,  a  decree 
was  entered  establishing  complainant's  exclusive  right  to  the 
trade-mark  from  that  date,  but  it  was  provided  that  neither  de- 
fendant nor  its  customers  should  be  liable  for  past  infringements. 
Held,  that  complainant  was  precluded  from  proceeding  against 
one  who  had  made  and  furnished  to  the  defendant  in  the  former 
suit  the  offending  cartons  used  by  it.  The  court  intimated  that 
a  printer,  lithographer  or  maker  of  cartons  or  wrappers,  who, 
with  notice,  furnishes  to  a  manufacturer  material  adapted  to  be 
used  by  him  in  unfair  competition,  would  be  liable.^  See  §  284 
for  full  discussion  of  this  question. 

§  383.  The  Defense  that  Defendant  was  Acting  only  as  Agent 
for  Another,  and  Received  None  of  the  Profits.  —  This  fact  does 
not  constitute  a  defense.  Agents  generally,  and  officers  of  a 
corporation,  may  be  made  parties  to  these  actions.  The  fact 
that  they  are  not  interested  pecuniarily  will  not  excuse  them.  A 
merchant  is  responsible  for  unfair  competition  by  his  employees 
if  done  by  them  in  course  of  his  business.  It  may  not  have  been 
ordered  or  suggested,  in  fact,  it  may  have  been  unknown  to  him,^^ 

19  Lever  v.  Goodwin,  36  Ch.  Div.  &  Co.,  146  Fed.  198-1906  (C.  C. 
1-1887.  Conn.). 

2«  Hillside  Chemical  Co.  v.  Munson  "  Yonge  v.  Ward,  21  L.  T.  N.  S.  480. 


668  Defenses 

or  it  may  have  been  done  contrary  to  his  orders.^-  In  all  such 
cases  the  merchant  himself  is  liable.  The  fact  that  the  defendant 
sold  infringing  goods  as  agent  for  a  nonresident,  is  no  reason  to 
refuse  injunction  on  the  ground  that  he  does  not  get  the  profits.-^ 

§  384.  The  Defense  that  Complainant's  Title  was  not  Prop- 
erly Established.  —  Defects  in  the  title,  under  which  complain- 
ant claims  his  rights,  cannot  be  availed  of  by  an  infringer,  so 
long  as  complainant  is,  at  the  time,  in  the  actual  possession  or 
use  of  the  name,  mark,  etc.  The  defendant's  act  is  none  the 
less  unfair  because  instead  of  passing  off  his  goods  as  the  goods 
of  another  he  is  representing  some  other  man's  goods  as  his,  or 
because  he  is  brought  to  account  by  someone  whose  interest  in 
the  injured  right  is  not  clear.  This  is  a  question  between  plain- 
tiff and  the  true  owner  of  the  mark  and  it  does  not  concern  the 
defendant.     It  is  his  duty  to  act  fairly. 

Actual  possession  and  use  of  a  trade  name,  or  of  the  good-will 
of  a  business,  on  the  part  of  complainant,  at  the  time  when  al- 
leged infringement  or  unfair  competition  begins,  is  sufficient;  the 
defendant  is  not  justified  by  mere  invalidity  in  the  transfer  under 
which  complainant  derived  title.  This  rule  was  applied  where  de- 
fendant alleged  that  the  contract  under  which  complainant  de- 
rived title  and  its  trade-marks,  etc.,  contained  a  provision  in 
violation  of  the  anti-trust  law.^^ 

§  385.  The  Defense  that  the  Offense  is  Too  Trivial  for  the 
Court  to  Notice.  —  To  establish  a  valid  cause  of  action  when  the 
offense  seems  trivial  it  must  appear  either  that  evidence  of  an  in- 
tent to  continue  to  commit  similar  offenses  in  the  future,  or  that 
the  offense  has  resulted  or  will  be  likely  to  result  in  substantial 
damage  to  the  plaintiff. 

Where  the  plaintiff  sold  ''John  Knight's  Primrose  Soap"  and 
"Primrose  Soap,"  and  proved  that  on  November  24,  1903,  de- 
fendant company  sold  to  one  A.  H.  as  "John  Knight's  Primrose 
Soap,"  one  bar  of  a  soap  not  made  by  plaintiff  and  inferior  in 
quahty,  it  was  held,  "the  passing  off  of  one  bar  of  soap,  by  it- 
self, does  not  constitute  a  ground  of  action,  unless  one  of  two 

"  Grierson  v.  Birmingham  Hotel  "  R.  J.  Reynolds  Tobacco  Co.  v. 
Co.,  18  R.  P.  C.  158-1901.  Allen    Bros.    Tobacco    Co.,    151    Fed. 

»  Walter  Baker  &  Co.  v.  Sanders,      819-1907  (C.  C.  Va.). 
80  Fed.  889-1897;  26  C.  C.  A.  220 
(2d  Cir.) 


Defense  that  Plaintiff's  Goods  are  Worthless    669 

other  things  are  estabhshed:  either  it  was  evidence  of  an  inten- 
tion to  continue  so  doing,  or  that  it  occasioned  damage  to  plain- 
tiffs."-^5 

Again  in  Rutter  &  Co.  v.  Smith, ~^  where  "there  was  a  sale  of 
one  ounce  of  tobacco,  value  unknown,  on  a  single  day,  without 
any  suggestion  that  anything  of  the  kind  had  occurred  before, 
and  it  seemed  to  the  court  not  likely  to  occur  again,  because  the 
manager  who  sold  the  tobacco  was  no  longer  in  the  defendant's 
service,"  it  was  held  too  trivial  a  case  for  injunction,  on  authority 
of  Leahy,  Kelly  &  Leahy  v.  Glover r"^ 

§  386.  The  Defense  that  Plaintiff's  Goods  are  Worthless,  or 
Useless.  —  It  is  not  a  defense  that  the  plaintiff's  goods  are  tech- 
nically or  scientifically  worthless.  If  there  is  a  market  for  them 
they  will  not  be  considered  worthless  by  the  court.  That  the 
public  buys  them  is  sufficient  proof  of  their  merit. ^^ 

§  387.  The  Defense  that  Defendant's  Name  is  Two  or  More 
Words,  while  Plaintiff's  is  One  and  Hence  Different.  —  Nor  is 
it  a  defense  to  an  unfair  use  of  a  name  that  the  defendant  uses  it 
in  two  words  instead  of  one,  as  ''Silver  Pan"  instead  of  ''Silver- 
pan."^^  Differences  between  rival  names  or  makes  must  be 
reasonably  distinct. 

§  388.  The  Defense  that  Plaintiff  has  Acted  Unfairly  Toward 
Third  Persons  not  Connected  with  the  Suit  at  Bar.  —  This  is 
no  defense;  such  misconduct  must  relate  to  the  subject-matter 
of  the  action.^''  But  where  the  plaintiff,  a  butter  concern,  was 
shown  to  have  sent  its  wrappers  to  dealers  in  low-grade  butter 
to  use  to  put  up  inferior  butter  under  this  brand,  which  normally 
was  used  only  on  a  better  grade,  the  court  refused  relief  although 
the  plaintiff  discontinued  the  practice  two  months  prior  to 
suit.^^  See  the  next  few  sections  for  further  discussion  of  this 
point. 

§  389.  The  Defense  that  Plaintiff  is  an  Impostor  and  Delud- 
ing the  Public.  —  This  defense  is  valid  if  the  plaintiff  is  deceiving 
and  imposing  some  fraudulent  or  worthless  article  on  the  public 

'^^  Knight  &  Sons  v.  Crisp  &  Co.,      Rxishlon,    Ltd.,    20    R.    P.    C.    477- 

21  R.  P.  C.  670-1904.  1902. 

2«  18  R.  P.  C.  49-1901.  ^"Spemj   &  Hutchinson  Co.   v.   L. 

2'  10  R.  P.  C.  141-1891.  Weher  &  Co.,  161  Fed.  219-1908  (C. 

^^Hostetter  v.  Martinoni,  110  Fed.      C.  111.). 

524.  ''  Costroville  Co-op.  Creamery  Co.  v. 

29  Faulikr  &  Co.,  Ltd.,  v.  0.  &  G.      Col,  6  Cal.  App.  533, 92  Pac  648-1907. 


670  Defenses 

by  methods  that  are  not  open  and  bona  fide.  Where  a  husband 
and  wife  had  for  some  years  given  entertainments  or  performances 
under  the  name  of  "The  Fays,"  the  principal  features  of  which 
were  manifestations  of  what  they  claimed  to  be  occult  powers, 
such  as  mind  reading  and  fortune  teUing,  defendants,  former  em- 
ployees, advertised  performances  of  their  own  in  such  a  manner 
as  to  lead  some  of  the  public  to  suppose  they  were  the  original 
Fays.  Held,  that  plaintiffs  were  precluded  from  equitable  relief 
on  the  ground  that  they  were  impostors,  and  were  deceiving  the 
pubhc  by  claiming  mysterious  powers  which  they  did  not  pos- 
sess.^- 

§  390.  The  Misrepresentation  Must  be  as  to  the  Subject- 
Matter  of  the  Suit. —  Misrepresentation  may  constitute  a  defense 
in  a  suit  for  unfair  competition.  In  Mossier  v.  Jacobs,^^  it  is  said 
that  the  doctrine  of  unclean  hands,  ''considered  as  a  general  rule 
controlling  the  administration  of  equitable  rehef  in  particular  con- 
troversies, is  confined  to  misconduct  in  regard  to,  or  at  all  events 
connected  with,  the  matter  in  litigation,  so  that  it  has  in  some 
measure  affected  the  equitable  relations  subsisting  between  the 
tw^o  parties,  and  arising  out  of  the  transaction;  it  does  not  ex- 
tend to  any  misconduct,  however  gross,  which  is  unconnected 
with  the  matter  in  Htigation,  and  with  which  the  opposite  party 
has  no  concern."  The  doctrine  of  unclean  hands  ''does  not 
repel  all  sinners  from  courts  of  equity,  nor  does  it  disqualify  any 
complainant  from  obtaining  relief  there  who  has  not  dealt  un- 
justly in  the  very  transaction  concerning  which  he  complains. 
The  iniquity  which  wall  repel  him  must  have  an  immediate  and 
necessary  relation  to  the  equity  for  which  he  sues."^'* 

A  shirtmaker  who  sold  goods  under  the  name  "Eureka  Shirts" 
described  himself  as  patentee.  Defendant  began  to  sell  shirts  by 
the  same  name.  The  plaintiff's  description  of  himself  as  pat- 
entee was  held  no  such  misrepresentation  as  to  debar  him  from 
rehef.^^ 

The  fact  that  plaintiff  discontinued  the  misrepresentations 
is  of  no  avail,  when  done  pending  suit.  Such  discontinuance  is 
"entitled  to  but  little  consideration  in  determining  the  bona  fides 

^^Fay    V.    Lamhourm,    124    App.  108  Fed.  821-34-1901  (C.  C.  A.  8th 

Div.  24.5-1908  (N.  Y.).  Cir.);  65  L.  R.  A.  878. 

^5  66  III.  App.  571-76-1896.  "  Ford  v.  Foster,  L.  R.  7  Ch.  611- 

^*  Shaver    v.    Heller    &    Merz    Co.,  1872, 


Plaintiff  Making  Misrepresentaiions  in  Own  Business    671 

of  the  complainants'  position  when  it  apphed  for  equitable  assist- 
ance."36    See  §393. 

§  391.  The  Defense  that  Plaintiff  is  Making  Misrepresenta- 
tions in  His  Own  Business.  —  One  of  the  defenses  most  commonly 
set  up  in  suits  for  unfair  competition,  is  that  the  complainant 
has  been  guilty  of  illegal  conduct  regarding  the  matter  in  ques- 
tion, which  is  abhorrent  to  the  conscience  of  the  court,  as  by 
public  false  representations  as  to  his  goods,  and  should,  therefore, 
be  denied  relief  on  the  ground  that  he  does  not  come  into  court 
with  clean  hands.  ''The  principle  is  general,  and  is  one  of  the 
maxims  of  the  court,  that  he  who  comes  into  a  court  of  equity, 
asking  its  interposition  in  his  behalf,  must  come  with  clean  hands; 
and  if  it  appears  from  the  case  made  by  him  or  by  his  adversary, 
that  he  has  himself  been  guilty  of  unconscionable,  inequitable, 
or  immoral  conduct  in  and  about  the  same  matters  whereof  he 
complains  of  his  adversary,  or  if  his  claim  to  relief  grows  out  of, 
or  depends  upon,  or  is  inseparably  connected  with  his  own  prior 
fraud,  he  will  be  repelled  at  the  threshold  of  the  court. "^'^ 

The  defense  is  peculiar  in  this;  that  it  does  not  usually  depend 
upon  any  consideration  of  justice  to  the  defendant;  but  upon 
considerations  of  public  policy.  In  this  respect  it  resembles  the 
defense  that  a  contract  sought  to  be  enforced  is  immoral.  "Ex 
turpi  causa  non  oritur  actio."  A  court  of  equity  cannot  be  ex- 
pected to  protect  an  exclusive  privilege  of  deceiving  the  public. ^^ 

Said  Chief  Judge  Duer,  in  Fetridge  v.  Wells,^^  "If  the  sales 
made  by  the  plaintiff  and  his  firm  are  effected,  or  sought  to  be, 
by  misrepresentation  and  falsehood,  they  cannot  be  listened  to 
when  they  complain  that  by  the  fraudulent  rivalry  of  others 
their  own  fraudulent  profits  are  diminished.  An  exclusive  privi- 
lege for  deceiving  the  public  is  assuredly  not  one  that  a  court  of 
equity  can  be  required  to  aid  or  sanction.  To  do  so  would  be  to 
forfeit  its  name  and  character." 

The  misconduct  precluding  the  suitor  from  relief  most  com- 

3^  Bear  Lithia  Springs  Co.  v.  Great  any  regard  to  the  defendant,  who  is 

Bear  Spring  Co.,  71  N.  J.  Eq.  595.  using  the  same  efforts  and  misrepre- 

^''  Simmons  Medicine  Co.  v.  Mans-  sentations  to  deceive  the  pubHc;  but 

field  Drug  Co.,  93  Tenn.  84-1893;  23  on  the  principle  that  it  will  not  inter- 

S.  W.  165.  fere  to  protect  a  party  in  the  use  of 

'8  Hobbs  V.  Francais,  19  How.  Pr.  trade-marks  which  are  employed  to 

(N.  Y.)  567-1860.     "The  Court  does  deceive  the  public"  (at  p.  571). 
not  refuse  its  aid  in  such  a  case,  from         ^o  /(.  Abb.  Pr.  (N.  Y.)  144-48-1857, 


672  Defenses 

monly  consists  of  misrepresentations  to  the  public,  but  does  not 
always  take  that  form.  Equity  will  not  come  to  the  aid  of  those 
who  in  business  use  methods  tending  to  bring  opprobrium  and  dis- 
grace upon  competitors.  Where  an  unincorporated  association  of 
wage-earning  cigarmakers  in  the  nature  of  a  trade  union,  devised 
and  caused  to  be  affixed  to  the  boxes  of  cigars  made  by  its  mem- 
bers a  "Union  Label,"  certifying  that  the  cigars  had  been  made  by 
a  first-class  workman,  a  member  of  the  cigarmakers'  union,  and 
stating  it  was  "an  organization  opposed  to  inferior  rat-shop, 
coolie,  prison,  or  filthy  tenement-house  workmanship,"  etc.,  and 
the  defendant  was  using  or  about  to  use  an  imitation  of  this  label 
on  cigars  not  made  by  the  members  of  the  union,  an  injunction 
was  denied,  not  only  on  the  ground  that,  as  the  association  did 
not  manufacture  nor  sell,  it  could  not  have  a  trade-mark,  but  also 
that  equity  would  not  relieve  against  the  counterfeiting  of  such  a 
label,  since  its  purpose  was  to  injure  nonunion  members  by  covering 
them  with  opprobrium,  and  preventing  the  sale  of  their  work.'*" 

The  plea  is  often  interposed  that  the  plaintiff  is  guilty  of  viola- 
tions of  some  statute  such  as  the  Sherman  Act.  This  defense 
was  raised  in  Coca  Cola  Co.  v.  Gay  Ola  Co.'^'^  but  unsuccessfully.^^" 

§  392.  Misrepresentation  Usually  but  not  Always  an  Affirma- 
tive Defense.  —  Misrepresentation  usually  is  treated  as  an  affirma- 
tive defense,  the  implication  being  that  the  complainant  has  the 
benefit  of  the  usual  presumption  of  innocence  and  that  fraud  or 
unconscientious  dealing  on  his  part  must  be  afhrmatively  shown 
to  establish  the  defense.  Sometimes,  especially  where  the  repre- 
sentations are  in  their  nature  such  as  to  excite  suspicion,  it  may 
be  the  duty  of  the  complainant  to  allege  and  prove  affirmatively 
as  part  of  his  case  the  truth  of  representations  made  to  the 
public,  as,  for  example,  respecting  the  ingredients  or  effects  of  a 
tonic  or  medicine. 

Where  a  manufacturer  of  a  preparation  who  advertised  it  as  of 
great  medicinal  value,  and  published  various  details  as  to  its 
origin,  ingredients,  and  preparation,  pleads  as  part  of  his  affirm- 
ative case,  the  truth  of  the  representations  thus  made  to  the  pub- 
lic, he  cannot  then  cast  upon  the  defendant  the  burden  of  prov- 

« McVey  v.   Brendel,    144   Pa.   St.  ""  Brown  Saddle  Co.   v.    Troxel,   98 

235-1891;  22  Atl.  912;  13  L.  R.  A.  Fed.  620;  Cnmors  v.  McConncll,  140 

377.  Fed.  412;  Weyman-Bruton  Co.  v.  Old 

"  200  Fed.  720.  Indian  Snuff  Mills,  197  Fed.  1015. 


Misrepresentations  Discontinued  before  Suing    673 

ing  their  falsity.  He  cannot  complain  that  the  truth  of  his 
representations  will  involve  the  disclosure  of  a  secret  process. 
He  should  not  publish  that  which,  if  true,  he  is  unwilling  to  pro- 
duce evidence  to  prove  to  be  true.^^ 

§  393.  Misrepresentations  by  Plaintiff  Discontinued  before 
Suing.  —  Misrepresentations  that  have  been  discontinued  be- 
fore the  beginning  of  the  suit  cannot  usually  be  availed  of  as 
a  defense,  even  though  complainants'  trade  might  have  been 
built  up,  in  part,  by  means  of  them.  The  authorities  are  not 
fully  in  accord  as  to  this,  and  the  principle  should  be  applied  with 
caution,  after  considering  all  the  circumstances  of  the  particular 
case.  In  such  matters  the  conscience  of  a  court  of  equity  is  not 
controlled  by  any  hard  and  fast  rule. 

In  Moxie  Nerve  Food  Co.  v.  Modox  Co.^^  the  complainant  made 
and  sold  a  preparation,  largely  as  a  beverage,  but  also  as  a  ''nerve 
food."  Fifteen  months  before  suit  it  discontinued  the  false 
statements  which  it  had  for  many  years  been  making  as  to  the 
ingredients  of  the  preparation.  In  spite  of  the  discontinuance, 
its  business  had  largely  increased.  The  court  considered  that 
these  earlier  misrepresentations  did  not  preclude  relief.  ''The 
defense  of  unclean  hands,  to  avail,  must  be  based  upon  condi- 
tions existing  at  the  time  when  the  party  applies  for  equitable  re- 
lief. *  *  *  While  it  is  doubtless  true  that  the  present  business 
was  built  in  part  upon  misrepresentation,  this  is  not,  in  my  opin- 
ion, a  sufficient  reason  for  denying  relief  to  a  complainant  who  has 
removed  the  objectionable  representations  from  its  labels,  wrappers, 
and  other  advertisements,  and  who  has  endeavored  to  conduct  its 
business,  making  only  such  representations  as  are  considered 
warranted  by  a  substantial  amount  of  medical  opinion"  (p.  489). 

In  Johnson  &  Johnson  v.  Seahury  &  Johnson^^  the  complain- 
ant was  not  debarred  from  relief  by  the  fact  that  it  had,  some 
years  before  the  suit  was  brought,  falsely  represented  in  its  cir- 
culars that  it  was  exclusively  entitled  by  act  of  Congress  to  use 
certain  devices,  such  as  a  red  cross,  these  misrepresentations 
having  been  discontinued  for  about  three  years.  It  is  said  here 
also  that  the  refusal  of  the  court  to  aid  one  coming  into  court 

«  Moxie  Nerve  FoodCo.w. Modox  Co.,  "  153  Fed.  487-1907  (C.  C.  R.  I.). 

152Fed.493-1907(C.  C.  R.I.).    Bear  "69  N.  J,  Eq.  696-706;  61  AtL 

Lithia  Co.  v.  Great  Bear  Co.,  71  N.  J.  5-1905. 
Eq.  595. 


674  Defenses 

with  unclean  hands  "is  based  upon  the  conditions  existing  when 
the  party  apphes  for  aid,"  citing  Warden  &  Co.  v.  California  Fig 
Syrup  Co."^'^  But  discontinuance  of  questionable  acts  before  suit 
will  not  always  restore  the  suitor  to  a  position  entithng  him  to 
demand  the  aid  of  a  court  of  equity.^" 

§  394.  Misrepresentations  Must  be  Intentional  and  Ma- 
terial. —  To  preclude  complainant  from  relief,  his  misrepresenta- 
tions must  be  both  intentional  and  material,  so  as  to  constitute 
a  deliberate  fraud  upon  the  public.  Allowance  will  be  made 
for  trade  exaggerations.  Inaccuracies  as  to  minor  matters  will 
be  disregarded,  and  the  tendency  is  to  construe  the  language 
used  in  a  liberal  way.  The'  question  is  as  to  the  honesty  of 
the  intention,  and  it  is  important  to  consider  what  the  actual 
effect  upon  the  public  mind  of  even  inaccurate  statements  is 
likely  to  be,  and  whether  the  public  will  really  be  misled  as  to 
any  material  point.  IMisstatements,  made  in  single  instances, 
and  quickly  withdrawn,  will  not  usually  be  fatal.  They  will 
not  be  considered  as  false  representations  which  will  prevent  a 
complainant  from  recovering.  ''But  it  is  not  every  departure 
from  the  strict  truth  which  will  be  fatal  to  the  plaintiff's  case, 
especially  where  no  one  can  reasonal^ly  be  misled  thereby."  ^"^ 

Not  every  exaggerated  statement  will  prevent  the  plaintiff's 
recovery;  nor  is  it  necessary  that  plaintiff  should  have  delib- 
erately designed  to  deceive  if  the  statement  must  inevitably  de- 
ceive."*^ This  line  of  demarcation  between  material  and  fraudu- 
lent misrepresentations  on  the  one  hand,  and  immaterial  harmless 
ones  on  the  other,  will  be  better  determined  through  comparison 
of  the  cases  than  by  any  effort  to  apply  a  general  rule. 

§  395.  Misrepresentations  as  to  Ingredients,  and  the  Nature 
and  Effect  of  a  Medical  Preparation.  —  Deliberate  misrepre- 
sentations as  to  the  ingredients  of  a  food  product,  medicine  or 
the  like,  are  usually  considered  material  and  fraudulent.  As 
is  said  in  Felridge  v.  Wells,'^'^  "No  representation  can  be  more 
material  than  that  of  the  ingredients  of  a  compound  which  is 
recommended  and  sold  as  a  medicine.  There  is  none  that  is 
so  likely  to  induce  confidence  in  the  application  and  use  of  the 
compound,  and  none  that,  when  false,  will  more  probably  be 

«  102  Fed.  334-1900.  «  Paul,  Trade-Marks,  §  212. 

«  Seabury  v.  Grosvenor,  14  Blatchf.  *^  Paul,  Trade-Marks,  §  315. 

(U.  S.)  262-1877.  «  4  Abb.  Pr.  (N.  Y.)  144-51-1857. 


Misrepresentation  as  to  Ingredients  675 

attended  with  injurious  and  perhaps  fatal  consequences."  Where 
one  who  made  and  administered  the  ''Keeley  remedies"  for 
addiction  to  hquor,  opium  and  tobacco  advertised  conspicuously 
that  gold  was  the  principal  ingredient,  was  of  great  efficacy,  and 
was  not  injurious,  and  these  were  false  representations,  deliber- 
ately made,  no  gold  being  used  in  the  ''Keeley  Cure,"  it  was  held, 
that  this  company  was  precluded  from  the  right  to  an  injunction 
against  a  rival  chargeable  with  unfair  competition,  and  that 
although  such  misrepresentations  were  not  pleaded  or  presented 
to  the  court,  yet  the  court  would,  of  its  own  motion,  apply  the 
doctrine  of  "unclean  hands,"  to  discourage  fraud  upon  the 
public.  ^° 

In  a  leading  case  in  the  Supreme  Court,  ^^  the  plaintiff  had 
spent  more  than  a  million  dollars  in  advertising  ''Syrup  of  Figs" 
or  "Fig  Syrup,"  as  it  was  indifferently  called  by  the  public. 
It  had  prima  facie  become  exclusively  entitled,  in  the  first 
place,  to  use  the  name  "Syrup  of  Figs"  or  "Fig  Syrup,"  regard- 
less of  the  form  of  bottle  or  package  in  which  it  was  sold,  and 
in  the  second  place,  to  use  the  particular  dress  in  which  their 
goods  had  been  offered  to  the  public,  and  the  defendants  then 
put  on  the  market  what  they  designated  as  "Syrup  of  Figs" 
and  "Fig  Syrup,"  their  wrappers  being  a  close  imitation  of  those 
of  the  plaintiff's.  The  defendant  set  up  as  a  separate  defense, 
that  the  medicine  which  was  to  be  used  as  a  laxative  did  not 
contain  figs  in  any  form,  but  that  it  consisted  of  a  well-known 
drug  called  senna,  which  has  a  laxative  effect,  as  a  basis,  mixed 
with  certain  aromatic  carminatives.  The  plaintiffs  alleged  that, 
at  the  outset,  the  syrup  of  figs  was  largely  used  as  one  of  the 
ingredients  and  that  for  this  reason  the  name  was  proper;  but 
the  court  held,  that  this  "would  be  no  justification  for  continuing 
the  use  of  the  term,  after  the  manufacturers  and  vendors  of  the 
medicine  ceased  to  use  fig  juice  as  a  material  ingredient,"  and 
that  "even  if  the  term  was  honestly  applied  in  the  first  instance, 
as  descriptive,  it  would  none  the  less  be  deceptive  and  misleading 
when,  as  is  shown  in  the  present  case,  it  ceased  to  be  a  truthful 
statement  of  the  nature  of  the  compound.  Nor  are  we  disposed 
to  concede  that,  under  the  evidence  in  the  present  case,  the  term 

50  Memphis  Keeley  Institute  v.  Leslie  ^^  Warden  v.  California  Fig  Syrup 

E.  Keeley  Co.,  155  Fed.  964-1907  Co.,  1S7  U.  S.  516-1902;  47  L.  ed. 
(C.  C.  A.).  282;  23  Sup.  Ct.  161. 


676  Defenses 

'Syrup  of  Figs'  or  'Fig  Syrup'  was  properly  used  as  descriptive 
of  the  nature  of  the  medicine  when  it  was  first  made.  Then, 
as  now,  the  operative  laxative  element  was  senna,  and  the  addi- 
tion of  fig  juice  was,  at  the  best,  experimental,  and  apparently 
was  intended  to  attract  the  patronage  ol  the  public  by  holding 
out  the  name  of  the  medicine  as  'Syrup  of  Figs'"  (id.  p.  537). 
For  these  reasons  it  was  held,  that  the  mark  and  names  used 
were  so  plainly  deceptive  as  to  deprive  the  plaintiff  company 
of  the  right  to  an  injunction  by  a  court  of  equity. 

This  decision  of  the  Supreme  Court  is  in  conformity  with 
two  earlier  cases  in  the  federal  courts,  involving  the  same  facts. ^^ 

A  representation  as  to  the  ingredients,  composition,  or  origin 
of  the  product  in  order  to  disentitle  to  relief,  should  be  clear 
and  dii'ect,  and  not  depend  only  upon  doubtful  inference  or 
construction.  Mere  suggest! veness  in  the  form  of  a  name  is 
rarely  enough.  For  example,  the  use  of  the  word  "  Alpenkrauter  " 
as  the  name  of  a  medicine  should  not  be  treated  as  holding  out 
to  the  public  that  the  medicine  is  made  from  herbs  grown  on 
the  Alps;  the  inference  is  too  uncertain. ^^ 

An  owner  of  a  recipe  for  making  a  certain  cosmetic  sold  it 
under  the  name  of  ''The  Balm  of  a  Thousand  Flowers."  The 
defendants  commenced  to  sell  a  similar  article,  calling  it  "The 
Balm  of  Ten  Thousand  Flowers."  A  temporary  mjunction 
was  granted,  but  afterward,  upon  the  coming  in  of  proofs,  it 
was  dissolved.  It  appeared  that  the  main  ingredients  of  the 
compound  were  oil,  ashes,  and  alcohol,  and  not  an  extract  or 
distillation  from  flowers.  Instead  of  being  a  balm,  the  compound 
was  a  soap.    It  was  evident,  said  the  com-t,  that  the  name  was 

^"^  California  Fig  Syrup  Co.  v.  ding  y.  How,  8  Sim.  ^77-1837;  Leather 
Putnam,  66  Fed.  750-1895  (C.  C.  Cloth  Co.  v.  American  Leather  Cloth 
Mass.);  California  Fig  Syrup  Co.  v.  Co.,  11  H.  L.  Cas.  523-1865;  Fetridge 
Stearns  &  Co.,  73  Fed.  812-1896  (C.  v.  Wells,  4  Abb.  Pr.  (N.  Y.)  144;  13 
C.  A.  6th  Cir.);  33  L.  R.  A.  56.  See  How.  Pr.  (N.  Y.)  385-1857;  Man- 
also  Fetridge  v.  Wells,  4  Abb.  Pr.  hattan  Medicine  Co.  v.  Wood,  108 
(N.  Y.)  144-1857.  The  court  founds  U.  S.  218-1882;  27  L.  ed.  706;  2 
its  decision  on  these  cases:  Connell  Sup.  Ct.  436;  Clotworthy  v.  Schepp, 
V.  Reed,  128  Mass.  477-1880;  Siegert  42  Fed.  62-1890  (C.  C.  S.  D.  N.  Y.); 
V.  Ahhott,  61  Md.  276-1883;  Alden  Krauss  v.  Peebles'  Sons  Co.,  58  Fed. 
V.  Gross,  25  Mo.  App.  123-1887;  585-1893  (C.  C.  Ohio). 
Prince  Mfg.  Co.  v.  Prince'  Metallic  "  Dr.  Peter  H.  Fahrney  &  Sons 
Paint  Co.,  135  N.  Y.  24-1892;  31  N.  Co.  v.  Rumincr,  153  Fed.  735- 
E.  990;  17  L.  R.  A.  129,  note;  Pid-  1907. 


Misrepresentation  as  to  Ingredients  677 

given  to  it  and  used  to  deceive  the  public,  to  attract  and  impose 
upon  the  purchasers,  and  the  plaintiff  was  held  to  be  entitled  to 
no  relief.  ^^ 

In  Wolfe  V.  Burke,^^  the  defendant  sold  Holland  gin  under  a 
title  including  the  word  ''Schnapps,"  describing  it  as  a  "super- 
lative tonic,  diuretic,  anti-dyspeptic  and  invigorating  cordial," 
while  plaintiff  also  sold  Holland  gin  under  a  title  of  which  the 
word  "Schnapps"  was  part,  describing  it  as  "an  invigorating 
tonic  and  medicinal  beverage,"  and  asserting  that  it  "has  no 
equal"  as  a  remedy  for  various  diseases.  Its  real  name  and 
nature  were  not  indicated.  The  court  was  of  the  opinion  that 
the  word  "Schnapps,"  whatever  may  be  its  signification  in  the 
country  from  which  it  was  imported,  was  not  generally  known  to 
mean  gin  in  this  country,  and  therefore  held,  that  the  representa- 
tions of  the  parties  as  to  the  name  of  the  article  were  calculated 
to  deceive,  and  said  that,  while  the  gin,  properly  prescribed  and 
taken,  probably  did  possess  some  medicinal  properties,  yet  "to 
palm  off  this  or  any  other  liquor  in  common  use  exclusively  as  a 
medicine  and  a  specific  for  certain  diseases,  under  names  not 
generally  understood  by  the  community,  is  a  species  of  fraud 
which  a  court  of  equity  should  not  be  called  upon  to  protect" 
(p.  123).5« 

5*  Fetridge  v.  Wells,  4  Abb.  (N.  fendant,  a  rival  hairdresser  and  per- 
Y.)  144-1857.  fumer,  commenced  selling  a  composi- 
"  56  N.  Y.  115-1874.  tion  similar  to  that  of  plaintiff,  in 
58  Pidding  v.  How,  8  Sim.  477-  bottles  with  labels  closely  resembling 
1837.  Plaintiff  made  a  new  mixture  those  used  by  him.  He  designated  his 
of  tea  which  he  called  "Howqua's  composition  and  sold  it  as  "Truefitt's 
Mixture."  He  made  false  statements  Medicated  Mexican  Balm."  The 
as  to  the  teas  of  which  his  mixture  was  plaintiff  thereupon  filed  his  bill, 
composed  and  as  to  the  mode  in  which  alleging  that  the  name  or  designa- 
they  were  procured.  i7eW,  that  courts  tion  of  "Medicated  Mexican  Balm" 
of  equity  will  not  extend  their  protec-  had  become  of  great  value  to  him  as 
tion  to  one  whose  case  is  not  founded  his  trade-mark,  and  seeking  to  re- 
in truth.  Perry  v.  Truefitt,  6  Beav.  strain  defendant  from  its  use.  The 
66-1842.  One  Leathart  had  invented  plaintiff,  in  his  advertisements  to  the 
a  mixture  for  the  hair,  the  secret  and  public,  falsely  set  forth  that  the 
recipe  for  mixing  which  he  had  trans-  composition  was  a  "highly  concen- 
ferred  to  the  plaintiff,  a  hairdresser  trated  extract  from  vegetable  bal- 
and  perfumer,  who  gave  to  the  com-  samic  productions"  of  Mexico,  and 
position  the  name  of  "Medicated  Mex-  was  prepared  from  "an  original  recipe 
ican  Balm,"  and  sold  it  as  "Perry's  of  the  learned  J.  F.  Von  Blumenbach, 
Medicated  Mexican  Balm."     The  de-  and   was   recently   presented   to   the 


678  Defenses 

Selling  a  prepared  food  described  as  "Fruit  Puddine"  or 
"pudding,"  when  there  was  in  fact  no  fruit  in  the  preparation, 
was  held  a  misrepresentation  sufficient  to  justify  the  refusal 
of  a  preliminary  injunction." 

A  statement  on  a  label  that  a  whiskey  is  "pure  Pepper  whiskey" 
when  it  is  35  per  cent,  other  whiskey  is  misrepresentation  which 
will  bar  recovery  in  equity.  The  public  are  entitled  to  an  ac- 
curate statement  as  to  the  source  and  ingredients  of  goods,  if 
any  statement  is  made.  "To  bottle  such  a  mixture,  and  sell 
it  under  the  trade  label  and  caution  notices  above  referred  to, 
is  a  false  representation,  and  a  fraud  upon  the  purchasing  public. 
A  court  of  equity  cannot  protect  property  in  a  trade-mark  thus 
fraudulently  used.  It  is  not  material  whether  foreign  whiskey 
mixed  with  Pepper's  is  as  good  or  better  whiskey  than  Pepper's, 
or  whether  the  mixture  is  better  than  pure  Pepper  whiskey. 
The  public  are  entitled  to  a  true  statement  as  to  the  origin  of 
the  whiskey,  if  any  statement  is  made  at  all.  The  complainants 
and  Pepper  are  not  to  be  protected  in  a  deception  of  the  public, 
even  if  it  works  to  the  advantage  of  the  public."  ^^  Selling  whiskey 
as  "Rye  Whiskey,"  "Fine  Old  Whiskey,"  and  "V.  O.  S.,"  used 
in  the  trade  for  "Very  Old  Stock,"  when  the  whiskey  "fell  far 
short  of  what  the  label  and  lettering  would  indicate,"  and  "the 
bottles  were  so  labeled  and  lettered  to  induce  the  public  to  be- 
lieve that  they  were  getting  a  quality  of  whiskey  far  superior 
to  what  they  actually  bought,"  is  misrepresentation.^^ 

The  fact  that  the  preparation  about  which  the  misrepresen- 
tation is  made  is  harmless  will  not  cure  such  misrepresentation. 
In  Phalon  &  Son  v.  Wright '''"  the  plaintiffs  made  a  perfume  called 
"Extract  of  Night  Blooming  Cereus,"  stating  expressly  that  it 
was  distilled  from  that  flower.    In  reality  it  was  not  made  from 

proprietor  by  a  very  near  relation  of  ^^  Krmiss  v.  Jos.  R.  Peebles'  Sons 

that  illustrious  physiologist;"  and  the  Co.,  58  Fed.  585-94-1893  (C.  C.  Ohio), 

court    refused    the    injunction,    Lord  ^^  J.  TV.  Epperson  &  Co.  v.  Bhdhen- 

Langdale,  M.  R.,  holding  that,  in  the  thai,   149  Ala.  125;  42  So.  863-1906. 

face  of  such  a  misrepresentation,  the  Other  federal  cases  are:  Paris  Medi- 

court  would  not  interpose  in  the  first  cine  Co.  v.  W.  H.  Hill  Co.,  102  Fed. 

instance,  citing  with  approval  Pidding  148-1900  (C.  C.  A.  6th  Cir.);  Moxie 

V.  How,  8  Sim.  477-1837  but  granting  Nerve  Food  Co.  v.  Modox  Co.,  152  Fed. 

leave  to  sue  at  law.  493-1907  (C.  C.  R.  I.). 

"  Clotivorthy  v.  Schepp,  42  Fed.  62-  «o  5  Phila.  464-1864. 
1890  (C.  C.  N.  Y.). 


Misrepresentation  as  to  Ingredients  679 

any  flower,  but  was  an  alcoholic  compound.  Held,  that,  even 
if  the  deception  were  harmless  in  its  effect,  it  was  not  to  be  disre- 
garded, and  would  debar  the  party  making  it  from  equitable  relief. 

The  fact  that  a  preparation  does  not  contain  an  ingredient 
which  is  mentioned  in  its  name  wiL  bar  recovery;  thus  a  pre- 
liminary injunction  against  the  use  of  the  words  "Bromide 
Quinine"  will  not  be  granted  on  the  petition  of  the  proprietor 
of  "Bromo-Quinine,"  when  the  word  "Bromo"  was  used  by 
him  to  make  the  public  suppose  that  bromide  was  a  leading  in- 
gredient of  "Bromo-Quinine,"  whereas  the  preparation  con- 
tained no  bromide.*^ ^ 

Representations  that  a  remedy  is  made  from  an  herb  discovered 
in  Bolivia  by  a  person,  when,  in  all  likelihood,  neither  the  per- 
son nor  the  herb  ever  had  any  existence,  will  be  condemned.  The 
manufacturer  of  "Moxie"  advertised  it  not  only  as  a  refreshing 
beverage,  but  also  as  "Nerve  Food,"  the  chief  ingredient  being 
described  as  a  Bolivian  herb  of  great  efficacy,  discovered  by 
Lieutenant  Moxie,  and  as  having  medicinal  value,  especially  for 
nervous  diseases.  Defendant's  evidence  made  it  extremely 
doubtful  whether  either  Lieutenant  Moxie  or  the  Bolivian  herb 
had  ever  existed,  and  tended  to  show  that  the  preparation  con- 
tained no  tonic  or  medicinal  ingredient  other  than  a  small  amount 
of  bitters,  and  could  not  have  any  marked  curative  effect.  By 
these  statements  the  complainant  forfeited  any  right  to  relief, 
on  the  ground  of  its  misrepresentations.*^^ 

Merchants  in  Great  Britain  who  sold  liver  pills  which  they 
called  "Charles  Forde's  Bile  Beans  for  Bihousness,"  advertising 
that  their  "beans"  were  based  upon  an  Australian  herb,  dis- 
covered by  an  eminent  scientist  named  Charles  Forde,  whereas 
these  statements  were  wholly  false,  were  denied  relief  by  the 
Scottish  court  when  a  rival  began  to  sell  liver  pills  under  the 
name  of  "Davidson's  Bile  Beans,"  the  general  get-up  of  his 
packages  differing  considerably  from  those  of  complainant's.^^ 
Complainant  used  for  a  lubricant  the  trade-mark  or  trade  name 
"non-fluid  oil,"  when  it  was  really  a  grease.  There  were  some  false 
advertisements  to  the  same  effect.    Held,  not  entitled  to  relief.^^ 

^^  Paris MedicineCo.Y.W.H .HillCo.,  ^^  Bile  Bean  Mfg.  Co.  v.  Davidson, 

102  Fed.  148-1900  (C.  C.  A.  6th  Cir.).  22  R.  P.  C.  553-1905  (Ct.  Sess.). 

82  Moxie  Nerve  Food  Co.  v.  Modox  ^*  N.  Y.  &  N.  J.  Lubricant  Co.  v. 

Co.,  152  Fed.  493-1907  (C.  C.  R.  I.).  Youiig,  77  N.  J.  Eq.  321. 


680  Defenses 

§  396.  Misrepresentations  Must  be  as  to  Ingredients  that 
are  Material.  —  A  misrepresentation  to  avail  the  defendant 
must  be  as  to  material  facts.  The  fact  that  beer  claimed  to 
be  made  of  Saazer  hops  and  imported  barley  was  made  in  part 
of  other  hops  equally  good,  and  of  American  barley  equal  in 
quality  to  the  imported,  was  not  considered  fatal.  These  were 
termed  by  the  court  distinctions  without  a  difTerence.*^^  It  is  an 
immaterial  misrepresentation  to  say  that  a  whiskey  is  pure  when 
it  contains  a  small  portion  of  water.  The  word  means  pure  in 
the  commercial  sense."*' 

§  397.  Extravagant  Claims  as  to  Efficacy  of  Medicines.  — 
Extravagant  claims  as  to  the  efficacy  of  a  proprietary  medicine 
in  curing  many  forms  of  disease  will  not  ordinarily  deprive  the 
manufacturer  of  relief  in  an  action  for  unfair  competition,  as  the 
medicinal  value  of  such  a  preparation  is  rather  a  matter  of  opinion 
than  of  fact."^  See  section  of  this  chapter  "Misrepresentation  by 
Laudatory  Expressions  and  Exaggerated  Trade  Phrases." 

The  rule  in  this  regard  may  be  changed  in  the  future  by  reason 
of  the  Federal  act  which  has  made  it  illegal  to  offer  any  remedy 
as  a  "cure." 

In  Siegert  v.  Gandolfi  "^  the  court,  on  appeal,  showed  a  disposi- 
tion to  apply  a  liberal  construction  to  expressions  contained  in 
advertisements.  There  was  a  statement  that  the  bitters  contained 
no  intoxicating  ingredient,  but  this  was  accompanied  by  another 
statement  that  they  consisted  of  "a  mixture  of  certain  bitter, 
aromatic  and  carminative  substances,  together  with  alcohol, 
added  as  a  preservative  and  solvent."  These  statements  were 
regarded  as  consisting  partly  of  extravagant  laudations,  partly 
of  statements  for  which  there  appeared  to  be  some  basis  in  med- 
ical opinion,  and  partly  of  statements  susceptible  of  a  favorable 
construction  when  read  with  other  statements,  hence  not  such 
fraudulent  misstatements  as  to  support  the  defense  of  "unclean 
hands."  Another  illustration  of  the  apparently  growing  tendency 
toward  lenient  construction  of  language  used  in  advertising  is 

85  Conrad  v.   Uhrig  Brewing  Co.,  8  Fed.  202.    These  later  cases  show  that 

Mo.  App.  277-1880.  \  the  cases  cited  in  Kohler  Mfg.  Co.  v. 

«8  Cahn    V.     GoUschalk,     14    Daly  ]  Beeshore,  8  C.  C.  A.  215;  59  Fed.  572, 

(N.  Y.),  542-1888;  2  N.  Y.  Supp.  13.  are   no   longer   authority,    or   at   all 

"  Samuel  Bros.  &  Co.  v.  Hostetter  z  events  are  to  be  applied  with  great 

Co.,  55  C.  C.  A.  Ill;  118  Fed.  257;  caution. 

Moxie  Nerve  Food  Co.  v.  Holland,  141  «  149  Fed.  100-1906. 


Misrepresentations  as  to  Manufacture,  Etc.      681 

found  in  Schuster  Co.  v.  Muller  '^^  where  the  contention  that  the 
labels  on  certain  bottles  of  bitters  were  deceptive  was  overruled, 
the  evidence  being  that  the  bitters  would  not  have  all  the  effects 
on  the  kidneys  claimed  for  them,  but  that  they  would  be  bene- 
ficial for  some  purposes,  and  were  good  bitters,  though  contain- 
ing too  much  alcohol  for  children.™ 

§  398.  Misrepresentations  as  to  Manufacture,  Place  of 
Manufacture,  Origin  of  Goods,  etc.  —  In  general,  represen- 
tations that  the  product  is  manufactured  at  a  particular  place 
or  by  particular  manufacturers  are  material.  "A  court  of  equity 
will  extend  no  aid  to  sustain  a  claim  to  a  trade-mark  of  an  article 
which  is  put  forth  with  a  misrepresentation  to  the  public  as  to 
the  manufacturer  of  the  article,  and  as  to  the  place  where  it  is 
manufactured,  both  of  which  particulars  were  originally  cir- 
cumstances to  guide  the  purchaser,"  according  to  the  Supreme 
Court  of  the  United  States  in  Manhattan  Medicine  Co.  v.  Wood."^ 
In  that  case  the  maker  of  "  Atwood's  Vegetable  Physical  Jaundice 
Bitters,"  claimed,  as  successor  of  the  founder  of  the  business, 
Moses  Atwood,  of  Georgetown,  Massachusetts,  to  be  entitled  to 
the  old  trade-marks,  names,  and  labels  of  the  concern.  Com- 
plainant's labels,  however,  described  the  medicine  as  manufac- 
tured by  Moses  Atwood  at  Georgetown,  Massachusetts,  although 
it  was  now  manufactured  at  New  York,  and  by  complainant. 

The  court  said:  ''These  statements  were  deemed  important 
in  promoting  the  use  of  the  article  and  its  sale,  or  they  would 
not  have  been  continued  by  the  assignees  of  the  original  inventor. 
And  yet  they  could  not  be  used  with  any  honest  purpose,  when 
both  statements  had  ceased  to  be  true.  It  is  not  honest  to  state 
that  a  medicine  is  manufactured  by  Moses  Atwood,  of  George- 
town, Massachusetts,  when  it  is  manufactured  by  the  Man- 
hattan Medicine  Company  in  the  City  of  New  York."  Where  a 
trade-mark  is  attached  to  a  product,  the  reputation  of  which  is 
based  upon  superior  material  and  processes,  and  special  care  and, 
skill  exercised  by  the  originator  of  the  mark,  an  assignee  of  such 
a  business  as,  for  example,  the  canning  of  salmon,  who  continues 
to  use  labels  falsely,  and  states  that  the  goods  are  prepared  by 
the  originator,  is  not  entitled  to  relief  against  an  infringer.^- 

8^28  App.  Cas.  (D.  C.)  409-1906.  "108  U.   S.   218-1882;   27   L.   ed. 

'"Newbro    v.    Undeland,    69    Nebr.      706;  2  Sup.  Ct.  436. 
821-1903;  96  N.  W.  635.  '^  Alaska  Packers'  Assiu  v.  Alaska 


682  Defenses 

Doubt  was  expressed  whether  a  geographical  term,  such  as  "East 
Indian,"  was  capable  of  exclusive  appropriation,  but  the  dis- 
missal of  the  bill  was  placed  on  the  ground  that  plaintiffs  were 
defrauding  the  public  by  using  these  words  "to  denote,  and  to 
indicate  to  the  public,  that  the  medicines  were  used  in  the  East 
Indies,  and  that  the  formula  for  them  was  obtained  there,  neither 
of  which  is  the  fact."  "  A  statement  on  a  label  that  goods  were 
made  at  A,,  when  they  were  made  at  T.,  may  not  amount  to  an 
misrepresentation,  but  if  so  made  as  to  imply  that  they  were 
made  by  the  original  maker  at  T.,  when  such  was  not  the  fact, 
that  will  prevent  recovery .'^^  Lord  Westbury,  as  Chancellor, 
held  that  a  false  statement  that  goods  were  made  by  an  American 
firm  and  in  part  at  a  place  in  America,  would  bar  relief^^ 

A  cigarmaker,  who  sought  an  injunction  restraining  defend- 
ant, a  printer  of  cigar  labels,  from  imitating  his  labels,  was  held 
to  have  forfeited  his  right  to  relief  by  representing  his  cigars, 
which  were  made  in  New  York  City,  to  be  from  a  particular 
plantation  in  Havana.  The  fact  that  the  untrue  statement  was 
in  a  foreign  language  was  regarded  as  making  no  difference.  "It 
is  enough,"  says  the  court,  "that  it  is  a  misrepresentation,  cal- 
culated to  have  that  effecton  the  unwary  and  unsuspicious."  "^ 
Again,  where  the  word  "Habana"  was  conspicuously  printed  on 
the  cigar  label,  while  only  the  filler  was  of  Havana  tobacco,  this 

Improvement  Co.,  60  Fed.   103-1894  tinuing  his  manufacture  at  Port  of 

(C.  C.  N.  D.  Cal.).  Spain.     This   was   held   to   be   such 

^3  Connell  v.  Reed,  128  Mass.  477-  misrepresentation  as  to  preclude  rehef. 

1880.  ''°  Leather  Cloth  Co.,  Ltd.,  v.  Ameri- 

''*  Siegert  v.  Abbott,  61   Md.   276-  can  Leather  Cloth  Co.,  Ltd.,  4  De  G.  J. 

1883.      Plaintiff's    bitters    were    de-  &  S.  137;  affirmed  in  11  H.  L.  Gas. 

scribed   on   the   label   as    "Aromatic  523-1865. 

Bitters,  or    Angostura    Bitters,    pre-  ^^  Palmer  v.  Harris,  60  Pa.  St.  156- 

pared  by  Dr.  Siegert,  at  Angostura,  161-1869;     Symonds     v.    Jones,    82 

now  Port  of  Spain,  Trinidad."     Dr.  Me.    302-1890;    Hegeman    v.    Hege- 

Siegcrt  had  been  dead  for  some  years,  man,  8  Daly  (N.  Y.),  1880;  Stachel- 

and  the  factory  had  been  removed  to  berg    v.    Ponce,    23   Fed.   430,    1885; 

Port  of  Spain.     The  court  says  that  Dixon  Crucible  Co.  v.  Gugge7iheim,  2 

it    was    true    that    a    removal    from  Brewst.  (Pa.)  321-1869;  Jennings  v. 

Angostura  to  Port  of  Spain  is  noted  on  Johnson,  37  Fed.  364-1888;  Feder  v. 

the  label;  but  it  is  so   noted  as  to  Benkert,  70  Fed.  613  (G.  G.   A.  9th 

leave  the  impression  that  Dr.  Siegert,  Gir.);  Felton  v.  Sellers  Co.,  4  Brewst. 

the  inventor   and   original   manufac-  (Pa.)  42-1867  (Sup.  Gt.  Pa.), 
turer,  had  so  removed  and  was  con- 


Misrepresentations  as  to  Manufacture,  Etc.      683 

use  of  the  word  constituted  a  material  misrepresentation  to  the 
purchasing  pubUc,  although  the  trade  were  not  misled."^  And  in 
Newman  v.  Pinto,"^^  a  plaintiff  was  debarred  from  relief  by  the 
fact  that  his  boxes,  taken  as  a  whole,  conveyed  the  misrepresen- 
tation that  his  cigars  were  made  in  Havana,  this  not  being  the 
fact.  The  fact  that  the  plaintiff  represented  that  his  powder  was 
made  by  a  London  concern  and  was  used  by  the  Queen,  when 
actually  it  was  made  in  New  York,  debarred  him  from  relief.^^ 
Uri  V.  Hirsch  ^°  was  a  suit  for  infringement  of  a  trade-mark  for 
whiskey.  The  use  of  a  trade-mark  which  represented  that  whiskey 
was  made  in  Nelson  county,  Ky.,  and  was  "Old  Style  Nelson 
County  Pure  Rye,"  etc.,  when  the  whiskey  was  not  made  by 
him,  but  purchased  from  rectifiers,  was  not  made  in  Kentucky 
and  was  not  a  pure  rye  but  blended,  amounted  to  misrepre- 
sentations which  deprived  the  user  of  the  label  of  the  right  to 
equitable  relief.  The  fact  that  the  name  of  the  original  manu- 
facturer was  used  after  assignment  to  his  son,  and  the  place  of 
manufacture  was  indicated  as  in  England  after  goods  had  begun 
to  be  made  in  the  United  States,  has  been  held  not  a  disqualifying 
misrepresentation.^^  Where  trade-mark  has  come  to  indicate 
superior  character  of  goods,  and  is  still  used  for  goods  of  same  char- 
acter, the  exact  name  of  the  maker  (or  place  of  manufacture) 
being  unimportant  to  the  public,  technically  inaccurate  state- 
ments on  these  prints  may  be  overlooked. ^^ 

In  Hazlett  v.  Pollack  Stogie  Co.,^^  no  relief  was  granted  to  a  com- 
plainant who  continued  a  business,  long  advertised  as  the  indi- 
vidual business  of  a  decedent  with  marks  and  insignia  distinctly 
implying  that  the  business  was  still  conducted  by  the  original 
manufacturer.^"*  Suggestion  of  manufacture  in  Italy  (instead  of 
the  United  States)  has  been  considered  to  disentitle  to  relief.^^ 
"Bottled  at  the  spring,"  when  really  bottled  at  a  distant  ware- 
house, has  been  held  to  be  a  material  misrepresentation,  preclud- 
ing from  relief.^^ 

"  Solis  Cigar  Co.  v.  Pozo,  16  Colo.  ^-  Layton  Pure  Food  Co.  v.  Church  & 

388-1891;  26  Pac.  556.  Dwight  Co.,  182  Fed.  24. 

'8  4  R.  P.  C.  508-1887  (Ct.  App.).  «'  188  Fed.  494. 

'9  Hobhs  V.  Francais,  19  How.  Pr.  «'  Aff'd  195  Fed.  28  (C.  C.  A.,  one 

(N.  Y.)  567-1860  (N.  Y.  Super.  Ct.).  judge  dissenting). 

80 123  Fed.  568-1903  (C.  C.  W.  D.  «^  De   Nobili   v.   Scanda,    198  Fed. 

Mo.).                                                ■  341. 

«'  Jacobs  V.  Beecham,  221  U.  S.  263.  ^^  Bear  Lithia  Springs  Co.  v.  Great 


084  Defenses 

§  399.  Misrepresentation  as  to  Maker  of  Goods.  —  The  Ohio 
court  has  gone  to  the  extent  of  holding  that  one  who  represents 
that  he  is  the  maker  of  a  medicine  by  a  formula  of  his  own,  when 
actually  it  is  made  by  the  formula  of  another  person  altogether, 
deceives  the  public  and  should  be  precluded  from  relief  if  he  asks 
that  his  own  name,  as  applied  to  the  medicine  and  formula,  be 
protected.  In  Buckiand  v.  Rice  ^^  complainants  used  the  name 
"Trommer"  as  a  name  for  their  extract  of  malt,  and  included  in 
their  advertisements  excerpts  from  standard  medical  books  com- 
mending Trommer's  preparation.  Complainants'  extract  was 
really  prepared  by  one  Gessner,  according  to  a  formula  of  his 
own,  and  not  according  to  any  formula  or  method  of  Trommer. 
Held,  that  this  was  an  attempt  to  deceive  the  public,  such  as 
would  preclude  relief  against  an  infringer,  so  far  as  concerned  the 
use  of  the  name  "Trommer."  But  a  real  or  apparent  inaccuracy 
of  statement  as  to  the  origin  of  goods  or  their  place  of  manufac- 
ture has  not  been  deemed  fatal  to  complainant's  standing  in  a 
court  of  equity  in  some  cases.  Sometimes,  for  example,  the  com- 
plainant, describing  himself  as  the  manufacturer,  does  not  in 
fact  directly  manufacture,  but  sells  goods  made  by  others  pur- 
suant to  his  orders  or  under  his  direction.  In  such  a  case,  he  is 
hardly  to  be  charged  with  fraud  toward  the  public.^^  A  person 
is  not  guilty  of  misrepresentation  even  though  he  states  he  is  the 
"sole  maker"  of  an  article,  when  the  fact  was  that  he  did  not 
make  the  article  at  all,  it  being  made  by  others  especially  for 
him.89 


Bear    Spring    Co.,    71    N.    J.    Eq.  as  to  preclude  them  from  the  relief 

595.  demanded  in  their  cross-bill. 

87  40  Ohio  St.  526-1884.     See  also         »"  Gluckman  v.  Strauch,  99  App.  Div. 

Wolfe  V.  Barnett  &  Lion,  24  La.  Ann.  (N.  Y.)  361-1904;  92  N.  Y.  Supp.  223. 

97-1872.  Plaintiffs  who  dealt  in  cigarette  papers 

^  Wormser  v.  Shayne,  HI  111.  App.  sought  to  enjoin  the  defendant  from 

556-1904,  infra;  Regent  Shoe  Mfg.  Co.  fraudulent  imitation  of  their  goods  in 

V.  Haaker,  75  Nebr.  426;  106  N.  W.  respect  to  trade-mark,  label,  and  ap- 

595-1906.     The  fact  that  defendants  pearance  of  package.    Plaintiffs'  label 

advertised  the  shoes  sold  by  them  as  bore  the  words  "  Gluckman  &  Son,  Sole 

made   by   themselves,    whereas   they  Manufacturers,  Paris;"  they  had  no 

were  in  fact  made  by  others  (though  as  factory  or  place  of  business  in  Paris, 

defendants  claimed  under  their  special  but  the  cigarette  papers  were  manu- 

dircrtion),  held  not  to  be  such  a  mate-  factured    there   especially   for    them, 

rial  and  fraudulent  misrepresentation  with  their  name  on  the  water-mark. 


Continuing  Use  of  Name  of  Predecessor  685 

§  400.  Continuing  Use  of  Name  of  Predecessor.  —  There  are 
cases  in  which  the  continued  use  of  the  name  of  a  predecessor 
in  the  business  as  that  of  the  manufacturer,  after  he  had  died 
or  transferred  his  interest,  has  been  held  to  be  proper  and 
not  fatal  to  the  right  to  relief;  for  instance,  in  Jennings  v. 
Johnson  ^^  the  plaintiff,  whose  name  was  Jennings  and  who  was 
successor  to  I.  S.  Johnson  &  Co.,  had  a  right,  it  was  held,  to 
represent  on  the  label  that  the  liniment  was  prepared  by  I.  S. 
Johnson  &  Co.,  it  being  common  in  such  cases  to  retain  the  old 
name.  Somewhat  analogous  was  the  Benedictine  case,  in  which, 
however,  there  was  no  express  statement  as  to  who  were  manu- 
facturing the  cordial.  The  complainant,  a  French  corporation, 
manufactured  at  Fecamp,  in  Normandy,  the  "Benedictine" 
cordial  according  to  the  secret  recipe  formerly  used  by  the  Bene- 
dictine monks  of  the  Abbey  of  Fecamp.  It  was  sought  to  enjoin 
defendant  from  selling  as  ''Benedictine,"  under  labels  and  wrap- 
pers so  precisely  similar  as  to  be  indistinguishable  from  complain- 
ants' product,  a  cordial  made  by  it,  at  St.  Louis,  Mo.  The  de- 
fense was  that  complainants'  label  was  untruthful.  Held,  that 
the  words  "Genuine  Benedictine  Liquor  of  the  Benedictine 
Monks  of  the  Abbey  of  Fecamp"  did  not  import  that  the  cordial 
was  still  actually  made  by  the  monks,  but  that  it  was  made 
according  to  then  fonn^ula,  and  that  there  was,  therefore,  no 
misrepresentation  J'  ^ 

The  plaintiff  company  published  the  "Gruber  Almanack," 
"J.  Gruber's  Hagerstown  Almanac,"  which  had  been  issued 
since  1835  by  John  Gruber,  and  after  his  death  by  his  succes- 
sors. John  Gruber  was  the  ancestor  of  all  but  one  of  the  plain- 
tiffs, and  the  almanac  continued  to  be  published  for  the  benefit 
of  his  family.  Defendants  put  upon  the  market  an  almanac  of 
very  similar  name,  which  resembled  plaintiffs'  closely  in  general 
appearance,  but  set  up  in  defense  to  a  suit  for  an  injunction  that 
plaintiffs  were  guilty  of  false  representations,  such  as  advertising 
their  almanac  as  "printed  by  John  Gruber,"  the  almanac  con- 
taining also  a  notice,  signed  "John  Gruber,"  authorizing  plain- 

HeW,  that  the  statement  on  the  label  9"37  Fed.  364-1888  (C.  C.   Me.), 

was  substantially,  though  not  exactly,  "  Societe  Anonyme,  etc.,  v.  Western 

true,  and  did  not  constitute  a  false  Distilling  Co.,  43  Fed.  416-1890  (C. 

representation  of  a  material  fact  so  C.  E.  D.  Mo.). 
as  to  disentitle  them  to  reUef. 


686  Defenses 

tiff  corporation  to  publish  the  almanac.  Held,  that  the  alleged 
misrepresentations  were  not  such  as  to  deceive  the  public,  and 
were  immaterial.^- 

§  401.  Misrepresentation  as  to  Unessential  Details.  —  The 
tendency  is  toward  liberality  in  construing  the  wording  of  labels. 
The  courts  are  disposed  to  apply  the  rule  de  minimis  non  curat 
lex,  and  disregard  misstatements  as  to  nonessential  details  which 
are  not  likely  to  have  any  material  effect  upon  the  mind  of  the 
l^ublic.^^  IVIisrepresentation  as  to  details,  where  there  is  no 
fraudulent  intention  and  where  the  use  of  the  words  may  be 
explained  in  any  reasonable  sense  consistent  with  honesty,  will 
not  preclude  relief  against  unfair  competition.  Describing  goods 
as  "imported,"  when  that  is  not  the  fact,  or  describing  one's 
self  as  "sole  agent,"  although  one  is  the  principal,  are  not  fraudu- 
lent misrepresentations.^^  In  Clark  Thread  Co.  v.  Armitage,^'^ 
it  appeared  that  in  the  four  years  preceding  his  suit,  com- 
plainant had  sent  to  an  agent  thirty-one  dozen  boxes,  marked 
"J.  &  J.  Clark  &  Co.,  Paisley,"  a  trade-mark  purchased  by  them 
from  a  Scottish  firm.  Defendant  contended  this  was  material 
misrepresentation,  as  the  thread  was  not  made  in  Paisley.  The 
court  considered  that  the  amount  of  the  sales  of  those  so  marked 
was  too  insignificant  to  bar  relief. 

In  another  case  one  Wormser  had  for  eight  years  sold 
"Model  Hats"  at  $1  each,  and  advertised  them  by  putting  a  II 
bill  on  each  hat  in  his  window.  Shayne  took  up  the  hat  business  in 
store  next  door,  put  up  the  sign  "The  Medal  One  Dollar  Hats," 
and  "The  Medal,"  and  put  dollar  bills  on  his  hats  in  his  windows. 
Shayne  set  up  as  an  affirmative  defense  that  the  statement  ad- 
vertised by  Wormser  that  he  made  all  his  hats,  was  manufacturer, 
jobber,  and  retailer,  and  hence  was  able  to  sell  for  a  dollar  was 
untrue.  In  reality  his  hats  were  made  by  another  house  in 
Massachusetts.  Held,  that  the  representation  that  he  was  the 
manufacturer  could  not  under  the  circumstances  defraud  his 

"2  Gruber  Almanack   Co.   v.  Swing-  placed  their  name  and  place  of  busi- 

ley,  103  Md.  362;  63  Atl.  684-1906.  ness    conspicuously    on    the    labels. 

^^Hoyt  V.  Hoyt,  143  Pa.  St.  623-  Held,  that  there  was  no  implied  mis- 

1S91;  22  Atl.  755;  13  L.  R.  A.  343.  representation  as  to  place  of  manu- 

Pliiintiffs  sold  the  cologne  manufac-  facture. 

tured  by  them  at  Lowell  as  "Iloyt's  ^^  Funke  v.  Dreyfus  &  Co.,  34  La. 

Gwman  Cologne,"  but  did  not  repre-  Ann.  80-1882. 

sent  it  to  be  made  in  Germany,  and  «  74 Fed. 936-1896  (CCA. 2d Cir.). 


Claim  of  Monopoly  —  Use  of  Term  "Patented"     087 

customers  or  the  j)ul)lic.  That  the  fact  that  Wormser  had  but 
seven  stores  and  advertised  he  had  ten  did  not  preclude  him 
from  rehef;  that  a  misrepresentation  must  be  material  to  pre- 
clude the  relief  prayed.^*' 

This  case  should  be  considered  with  care.  It  is  doubtful  if  the 
court  would  take  this  stand  at  the  present  time  in  view  of  the 
growth  of  the  sentiment  for  accurate  as  well  as  honest  statements 
in  advertising. 

It  is  not  dishonest  conduct  to  sell,  under  the  name  "Port- 
land," a  stove  resembling  in  style  and  structure  a  lower-priced 
stove  known  on  the  market  as  the  "Canopy,"  though  differing 
from  it  in  certain  details.  As  long  as  there  was  no  other  "Port- 
land" stove  it  was  considered  that  even  if  this  stove  had  been 
the  same  as  that  sold  by  others  as  "Canopy,"  he  had  a  right  to 
give  it  another  name.^^  To  say  regarding  pills  of  domestic  manu- 
facture that  they  were  "specially  packed  for  U.  S.  America" 
did  not  necessarily  imply  that  they  were  imported,  and  fell  "far 
short  of  being  a  false  representation."  ^^ 

§  402.  Misrepresentations  Implying  Claim  of  Monopoly  — 
Use  of  Term  "  Patented."  —  An  article  is  sometimes  described 
as  "patented,"  or  a  mark  or  device  as  "copyrighted"  or  "regis- 
tered," where  the  fact  is  otherwise.  Is  that  a  merely  technical 
inaccuracy,  not  tending  really  to  mislead  the  public,  or  is  it 
intended  to  convey  a  false  impression,  such  as  that  the  advertiser 
has  patent  rights  which  give  him  a  monopoly  in  certain  valuable 
features  of  his  goods?  In  Flavel  v.  Harrison,^^  plaintiff  made 
and  sold  a  stove  or  kitchen  range  called  "Flavel's  Patent  Kitch- 
ener," although  it  had  never  been  patented,  and  he  was  denied 
a  preliminary  injunction  on  the  ground  that  he  had  falsely  de- 
scribed his  goods  as  patented. 

98  Wormser  v.  Shayne,  111  111.  App.  turers,  special  rooms  and  machinery 

556-1904;  Plotzker  v.  Lucas,  24  R.  P.  being  set  apart  for  their  work.    Held 

C.  551-1907  (Ct.  Sess.  [Scotl.l  Outer  no  such  misrepresentation  as  to  pre- 

House).      Complainers,    who    had    a  elude  from  relief, 

number  of  shops  for  the  sale  at  retail  ^^  Van  Horn  v.   Coogan,  52  N.  J. 

of  shirts  and  collars,  advertised  that  Eq.  380-1894;  28  Atl.  788. 

they  manufactured  their  own  goods  ^^  Beechavi  v.  Jacobs,  159  Fed.  129- 

and   had   a   factory   at   Belfast   and  1908  (C.  C.  A.  2d  Cir.). 

Londonderry.     They  did  not  manu-  s"  10  Hare,  467-1853;  19  Eng.  L.  & 

facture   themselves,   but   had   special  Eq.  15. 
arrangements  with  certain  manufac- 


688  Defenses 

Where  a  company  advertised  that  its  method  was  patented, 
and  its  right  so  to  mark  exclusive,  and  no  such  patent  right 
existed,  the  Vice-Chancellor  of  New  Jersey  said:  "It  was  more- 
over a  falsehood  publicly  made  by  advertisements  for  the  ap- 
parent purpose  of  influencing  dealers,  who  were  adopting  the 
method  of  lia\'ing  their  names  woven  on  the  goods  by  manufac- 
turers, to  deal  with  complainant  only,  under  penalty  of  infringe- 
ment of  patent,  and  it  may  possibly  have  had  this  effect."  It 
was  thought  that  had  this  false  statement  appeared  in  connection 
with  the  mark  or  name  on  the  goods  themselves  it  would  clearly 
have  precluded  complainant  from  relief,  but  that,  as  it  was  in 
fact  only  a  collateral  misrepresentation,  there  might  be  doubt 
as  to  whether  it  was  fatal ;  but  on  the  ground  —  among  other 
things  —  of  this  misrepresentation,  a  prelimmary  injunction 
was  denied.^  ''If  a  trade-mark  represents  an  article  as  protected 
by  a  patent,  when  in  fact  it  is  not  so  protected,  it  seems  to  me 
that  such  a  statement  prima  facie  amounts  to  a  misrepresentation 
of  an  important  fact,  which  would  disentitle  the  owner  of  the 
trade-mark  to  relief  in  a  court  of  equity  against  anyone  who 
pirated  it."  ^  The  mere  fact  that  there  has  originally  been  a 
patent  will  not  excuse  the  continued  representation  after  the 
patent  expired,  unless  it  can  be  shown  that  the  word  "patent," 
as  applied  to  a  particular  article,  is  no  longer  understood  by  the 
trade  or  the  public  to  imply  an  actually  subsisting  patent,  but 
was  merely  part  of  the  ordinary  designation  of  the  article.  Edel- 
sten  V.  Vick  ^  appears  to  be  disapproved  by  the  case  just  men- 
tioned. 

Cheavin  stamped  filters  "Improved  Patent,"  and  also  with 
the  words  "By  Her  Majesty's  Royal  Letters  Patent,"  with  a 
medallion  and  the  royal  arms.  The  patent  had  expired  some 
years  earlier.  This  was  construed  as  a  representation  that  the 
patent  was  still  in  force,  and  disentitled  plaintiff  to  relief,  al- 
though there  was  doubtless  no  actual  intention  to  deceive.  The 
court  decided  it  could  not  assist  in  the  continuance  of  a  mis- 
representation.^ 

^Stirling   Silk    Mfg.    Co.    v.    Ster-     can  Leather  Cloth  Co.,  Ltd.,  11  H.  L. 
ling  Silk  Co.,  59  N.  J.  Eq.  394-400-      Cas.  523-42-1865. 
1900;  46  Atl.  199.  "  11  Hare,  78-1853. 

2  Leather  Cloth  Co.,  Ltd.,  v.  Ameri-  *  Cheavin   v.    Walker,    5   Ch.    Div. 

850-1877  (Ch.  App.). 


Claim  of  Monopoly  —  Use  of  Term  "Patented"     689 

Describing  in  circulars  a  product  as  patented,  when  the  patent 
has  in  fact  expired  some  years  before,  causes  the  circulars  to 
give  the  public  to  understand  that  the  article  is  protected  by  a 
still  ^bsisting  patent,  and  thus  tends  to  "stifle  competition, 
and  to  extend  the  monopoly  granted  by  the  patent  beyond  the 
term  of  such  grant."  ^ 

It  makes  no  difference  that  the  representation  as  to  the  patent 
is  made  in  a  part  only  of  the  advertising  matter.  Fraudulent 
matter  in  any  considerable  part  of  the  advertising  media  tinges 
the  whole  with  that  fraud  upon  which  equity  looks  with  disfavor. 
On  the  other  hand,  in  a  number  of  cases  the  use  of  the  word 
''patent"  or  ''patented,"  where  there  was  no  patent,  has  been 
liberally  construed  as  having  a  meaning  consistent  with  the  facts, 
or  has  been  disregarded  as  immaterial.  For  instance,  where  a 
manufacturer  of  aerated  and  mineral  waters  in  Dublin  and  Bel- 
fast exported  considerable  quantities  of  soda  water  known  as 
"Club  Soda,"  to  Jamaica,  and  suit  was  brought  to  restrain  de- 
fendants from  selling  their  own  soda  under  the  same  name,  it 
was  set  up  that  plaintiff  was  debarred  from  relief,  by  reason  of  a 
false  statement  on  his  label,  viz.,  "Manufactured  in  Ireland  by 
H.  M.  Royal  Letters  Patent."  The  explanation  given  by  plain- 
tiff was  that  this  meant  "Manufactured  in  Ireland  by  means  of 
patented  machinery."  This  explanation  was  deemed  sufficient 
by  the  court.  Lord  Morris  remarking  that  there  was  nothing 
in  the  evidence  to  throw  doubt  upon  it  or  to  show  that  anyone 
had  been  or  could  be  deceived  by  those  words,  and  saying:  "The 
appellant's  trade  is  an  honest  trade,  and  their  Lordships  are  not 
prepared  to  hold  that  by  reason  of  some  words  not  designed  to 
mislead,  and  at  most  equivocal,  the  appellant  has  been  guilty  of 
a  misrepresentation  which  disentitles  him  to  relief."  ^  In  Mar- 
shall v.  Ross  ^  goods  were  described  as  "patent  thread,"  though 
not  really  protected  by  a  patent.  This  was  not  such  a  misrepre- 
sentation as  to  deprive  the  owner  of  his  right  to  protection  against 
an  infringement  of  his  label.  It  appeared  that  the  goods  had, 
by  the  usage  of  many  years,  acquired  the  designation  of  "patent" 
in  the  trade. 

Registering  "Insurance  Oil"  as  a  trade-mark  in  the  patent 

5  PreservaUne    Mfg.    Co.    v.    Heller         "  Cochrane  v.  MacNish  &  So?i,  App. 
Chemical  Co.,  118  Fed.  103-1902  (C.      Cas.  225-1896. 
C.  111.).  '  L.  R.  8  Eq.  651-1869. 


690  Defenses 

office,  and  branding  goods  "Trade-mark  Insurance  Oil,  Pat., 
Jan.  5th,  1875,"  was  taken  to  refer  to  the  registration  of  the 
trade-mark,  and  it  was  held  that  deception  of  the  public  was  not 
sufficiently  shown. ^ 

§  403.  Misrepresentation  by  Use  of  the  Term  "  Copyrighted  " 
or  "Registered."  —  The  use  of  such  terms  as  ''copyrighted" 
or  ''registered"  has  been  liberally  dealt  with,  in  a  similar  way, 
in  many  cases.  That  the  word  "copyrighted"  was  used  in  con- 
nection with  a  trade-mark  or  trade  name  on  a  cigar  label,  al- 
though there  was  in  fact  no  copyright,  has  been  held  an  unimpor- 
tant misrepresentation,  and  probably  an  unintentional  one,  and  so 
not  available  as  a  defense  to  a  suit  for  infringement.^  Although 
not  entitled  to  the  use  of  a  word  as  a  technical  trade-mark,  a  dealer 
had  nevertheless  registered  it  as  such,  and  described  it  on  his 
labels  as  a  "registered"  trade-mark.  At  the  time  of  the  regis- 
tration he  knew  of  no  prior  use  by  others,  and  believed  himself 
entitled  to  register  it.  The  statement  being  literally  true,  though 
not  perhaps  conveying  an  accurate  impression,  and  the  intent 
having  been  honest,  there  was  no  such  misrepresentation  as  to 
preclude  relief.  ^° 

Where  the  complainant's  label  included  the  words  "Trade- 
mark registered,  consisting  of  name,  picture,  and  autograph, 
November  11,  1843,"  and  yet  there  was  no  provision  for  regis- 
tering a  trade-mark  till  long  after  1843,  and  the  trade-mark  was 
not  registered  until  1874;  but  on  November  11,  1843,  a  book 
title  containing  the  name  of  the  medicine  was  filed  under  the 
copyright,  the  statement  was  not  construed  as  dishonest  or  mis- 
leading.^^ 

The  case  of  Johnson  v.  Seabury^^  involved  a  misrepresenta- 
tion, but  it  will  be  noted  that  there  were  various  circumstances, 
such  as  the  discontinuance  of  the  misrepresentation,  which  the 

8  Insurance  Oil  Tank  Co.  v.  Scott,  '  Solis  Cigar  Co.  v.  Pozo,  16  Colo. 

33  La.  Ann.  946-1881.     In  Cahn  v.  388;  26  Pac.  556. 

Gottschalk,    14    Daly    (N.    Y.),   542-  '<>  Sartor  w.  Schaden,  125  Iowa,  696- 

1888;  2  N.  Y.  Supp.  13.    Plaintiffs'  1904;  101  N.  W.  511. 

label  contained  the  words  "Pat.  Aug.  "  C.  F.  Simynons  Medicine  Co.  v. 

13th,  1872,"  this  being  apparently  the  Mansfield   Drug   Co.,   93   Tenn.    84- 

date  of  registry  of  the  trade-mark.  100-1893;  23  S.  W.  165. 

Held  to  be  an  inaccuracy  of  small  '^  71  n.  j.  Eq.  (1  Buch.)  750;  67 

importance,  and  not  indicative  of  any  Atl.  36-1907  (N.  J.  Err.  &  App.). 
intent  to  deceive  the  pubUc. 


Laudatory  Expressions  and  Exaggerated  Phrases    691 

court  took  into  account  in  deciding  that  the  misrepresentation 
was  not  fatal.  The  complainant  was  widely  known  as  a  maker 
of  absorbent  cotton  and  gauze,  distinguished  by  the  mark  or 
name  of  "Red  Cross."  From  1894  to  about  1899,  it  stated  in 
catalogues  and  price  lists,  that  by  act  of  Congress  the  American 
National  Red  Cross  Society  was  exclusively  entitled  to  the  red 
cross  symbol,  and  that  this  society  had  granted  to  complainant, 
in  recognition  of  its  services  in  perfecting  surgical  appliances 
and  medical  preparations,  the  exclusive  right  to  use  the  red  cross 
trade-mark  on  this  class  of  preparations.  This  was  not  true, 
but  there  was  some  foundation  for  it,  in  that  the  Red  Cross  So- 
ciety had  agreed  not  to  contest  complainant's  exclusive  right  so 
to  use  the  red  cross  trade-mark,  in  case  a  pending  bill,  vesting 
in  the  society  an  exclusive  right  to  the  red  cross  symbol,  and  at 
first  opposed  by  complainant,  should  be  passed.  Considering 
the  fact  that  the  reputation  of  complainant's  goods,  under  the 
mark  and  name  in  question,  had  been  established  before  the 
first  publication  of  the  misrepresentation,  and  that  there  was  no 
proof  that  its  trade  had  been  built  up  by  the  misrepresentation, 
and  also  the  fact  that  the  misrepresentation  had  been  discontin- 
ued before  suit  brought,  the  court  held,  that  the  defense  of  un- 
clean hands  could  not  be  availed  of. 

§  404.  Misrepresentation  by  Laudatory  Expressions  and 
Exaggerated  Trade  Phrases.  —  While  false  statements  as  to 
material  matters  of  fact  will  debar  a  suitor  from  rehef,  mere 
extravagant  or  exaggerated  commendation  of  the  goods,  which 
are  more  expressions  of  opinion  than  statements  of  facts,  will 
not  have  that  effect. 

Allowance  must  be  made  for  mere  dealers'  talk,  and  for  trifling 
inaccuracies  and  faults.  It  is  not  to  be  presumed  that  the  pub- 
lic believe  that  every  statement  in  an  advertisement  is  a  warranty 
and  that  as  a  consequence  the  advertiser  must  prove  the  exact 
truth  thereof  on  penalty  of  losing  the  whole  good-will  of  his 
business.  "If  it  can  be  estabhshed  in  any  case  that  the  trade 
name  which  the  complainant  seeks  to  protect  owes  its  value 
in  an}^  material  degree  to  false  representations  on  his  part, 
we  think  he  is  not  entitled  to  the  protection  of  a  court  of 
equity.  To  give  him  relief  would  not  only  perpetuate  a  false- 
hood by  decree  of  the  court  as  in  a  case  where  the  false  repre- 
sentation is  on  the  face  of  the  trade-mark  or  label;  but  it  would 


692  Defenses 

enable  a  man  to  profit  by  his  own  wrong,  and  the  court  would 
be  in  the  position  of  protecting  a  property  right  acquired  by 
fraud.  But  we  think  there  is  no  presumption  that  a  trade 
reputation  is  due  to  the  highly  colored  or  false  statements  in  ad- 
vertisements. Such  statements  are  not  so  uncommon  as  to  mis- 
lead an  ordinary  man;  most  persons  discount  them."^^ 

Representing  grindstones  as  made  from  "selected"  or  the 
"best  blue  Huron  grit"  was  justified  if  the  quality  of  the  ma- 
terials used  was  not  inferior  to  what  the  trade  generally  had  ex- 
pected as  of  the  grade  indicated.^* 

"The  statement,  (sold  everywhere,)  is  on  a  par  with  the 
equally  modest  suggestion  of  the  defendant,  'that  his  thread  is 
the  latest  and  best.'  This  harmless  exaggeration  is  understood 
and  discounted  by  all.  It  is  not  fraud,  but  merely  '  trade  talk.' 
No  one  is  deceived.     No  one  is  injured  "^^^  (p.  899). 

In  Moxley  Co.  v.  Braun  &  Fitts  Co.^^  Moxley  made  oleomar- 
garine, which  he  called  "The  Only  High  Grade."  The  words 
constituted  his  trade-mark,  Moxley  having  begun  to  use  it  in 
1893.  Defendant  began  to  use  a  close  copy  of  the  design  of 
plaintiff's  label,  and  used  with  it  these  same  words.  This  phrase 
was  treated  as  a  trade  exaggeration  rather  than  as  a  false  state- 
ment of  fact.  These  words  were  arbitrary  —  not  capable  of 
exactly  defining  or  describing,  the  word  "only"  being  used  as  a 
bombastic  catch  word  —  and  the  same  is  true  of  the  phrase 
"finest  goods  made."  *  *  *  "  It  is  not  denied  that  appellee's 
butterine  is  high  grade.  No  one  purchasing  it  with  such  under- 
standing would,  therefore,  be  deceived;  whether  it  is  the  'only' 
high  grade  or  not  is  not,  therefore,  material.  To  sustain  appel- 
lant's contention  it  would  have  to  appear  that  the  alleged  mis- 
representations are  not  only  misleading  or  untrue,  but  that  they 
are  also  material  and  do  in  fact  mislead."  Dadirrian  v.  Yacuhian, 
98  Fed.  872,  cited  by  appellant's  counsel. 

Advertisement  of  an  article  as  "genuine"  may  not  mean  that 
it  is  the  best  or  purest  grade.  This  too  is  a  trade  expression  the 
meaning  of  which,  as  used  ordinarily,  is  well  understood.    Gen- 

''  Johnson  &  Johnson  v.  Seabury  &  ^^  Clark  Thread  Co.  v.  Armitage,  67 

Johnson,  71  N.  J.  Eq.  (1  Buch.)  750;  Fed.  896-1895  (C.  C.  S.  D.  N.  Y.). 
67  Atl.  36-1907,  at  p.  38.  "  93  111.  App.  183-1900. 

^*  Cleveland  Stone   Co.   v.    Wallace, 
52  Fed.  431-1892  (C.  C.  Mich.). 


Laudatory  Expressions  and  Exaggerated  Phrases    693 

uine  molasses  may  mean  any  grade  of  molasses,  so  long  as  it  is 
molasses.  To  call  a  jewel  a  genuine  stone  from  a  particular  mine 
would  have  a  much  more  specific  meaning,  and  he  who  used  it 
would  be  held  to  strict  correspondence  between  name  and  article. 
Advertising  "Georgia  Coon"  molasses  as  "genuine  molasses," 
although  it  was  not  genuine  cane  molasses,  but  largely  glucose, 
has  been  held  not  to  imply  that  it  was  wholly  from  sugar  cane; 
and,  that  the  public  was  not  deceived,  and  the  plaintiff  was  not 
debarred  by  that  act  from  relief  against  the  infringement  of 
his  trade-mark.  2°  This  case  was  later  reversed  on  other 
grounds. 

Undoubtedly  this  decision  does  not  represent  the  rule  in  this 
regard  as  it  exists  to-day.  In  most  forums,  it  would  be  con- 
sidered fraudulent  to  represent  an  article  as  "genuine  molasses" 
when  made  largely  of  glucose.  The  case  is  referred  to  only  as 
illustrative  of  the  change  in  the  rule  in  this  respect. 

Extravagant  claims  on  the  part  of  the  proprietor  of  a  patent 
medicine  as  to  its  efficacy,  such  as  statements  that  it  will  cure  a 
large  number  of  diseases,  such  statements  being  in  all  probability 
unfounded,  have  been  held  in  the  past  not  to  constitute  such  fraud- 
ulent misrepresentations  as  to  preclude  the  proprietor  from  relief 
against  a  simulating  competitor. 

Grosscup,  J.,  has  said  of  such  a  claim:^^  "It  is  true  that  the 
remedy  was  advertised  by  appellant  as  a  cure  for  more  diseases, 
perhaps,  than  any  remedy  could  possibly  cure.  But  this,  in 
itself,  is  not  unclean  hands.  Proprietary  medicines,  generally, 
promise  more  than  they  do;  and  for  that  matter,  licensed  phy- 
sicians often  do  the  same.  And  with  proprietary  medicines,  as 
with  physicians,  the  object  often  is  to  give  mere  temporary  help, 
under  the  belief  of  the  patient  that  he  is  obtaining  a  cure.  But 
whether  this  be  an  improper  use  of  the  public's  confidence,  or 
constitutes  a  practice  against  public  policy,  is  a  question  to  be 
decided  by  the  state,  through  its  legislature,  and  not  by  the  courts 
under  the  equitable  doctrine  of  unclean  hands;  for  so  far  as  this 
case  discloses,  proprietary  medicines  are  lawful  commerce,  and 
are  to  be  given  the  freedom  of  mere  trade  boasting  that  ordinary 
commerce  is  allowed  to  enjoy"  (p.  737). 

2"  Caffarelli  v.  Western  Grocer  Co.  ^i  /),.  pg^g^.  f{.  Fahrney  &  Sons  Co. 
Bros.,  102  Tex.  104;  127  S.  W.  1018-  v.  Ruminer,  153  Fed.  735-1907  (C.  C. 
1908.  A.  7th  Cir.). 


694  Defenses 

In  Moxie  Co.  v.  Modox,"^^  the  plaintiff  sold  a  secret  preparation, 
which  it  represented  to  have  been  prepared  "from  a  simple  cane 
hke  plant  grown  near  the  equator,"  and  which  was  a  nerve  food, 
and  which  had  cured  brain  and  nervous  exhaustion  as  well  as 
paralysis  and  other  serious  diseases.  The  defendant  showed  a 
very  strong  likelihood  that  these  statements  were  not  true,  and 
that  the  preparation  was  merely  a  root  beer.  The  court  held  that 
the  defendants  had  been  guilty  of  unfair  imitation  of  the  com- 
plainants' trade-mark  and  its  dress,  and  had  been  guilty  of  unfair 
competition,  but  dismissed  the  bill  because  of  the  falsity  of  the 
statements  made  by  the  complainant. 

The  word  "Holeproof"  applied  to  socks  is  not  a  representation 
that  the  socks  will  never  wear  out. 2"* 

§  405.  Miscellaneous  Cases  of  Misrepresentation  Deemed 
Harmless.  —  Various  statements  have  been  held  immaterial 
and  harmless  —  many  of  which  relate  to  the  name  of  a  proprietor 
or  manufacturer.  For  instance,  the  use  of  part  of  a  name  for  the 
whole  has  been  held  not  fraudulent  if  (1)  it  was  not  used  with 
fraudulent  intent;  (2)  no  actual  deceit  resulted. ^^  This  case 
would  seem  inconclusive  in  this  regard.  While  perhaps  there 
was  good  intention  and  no  loss  or  deceit  resulted  in  that  par- 
ticular instance,  it  is  not  difficult  to  imagine  cases  where  such  an 
act  on  plaintiff's  part  might  cause  deception. 

§  406.  Claiming  Falsely  to  be  a  Corporation.  —  It  has  been 
urged  that  relief  should  be  denied  to  those  who  hold  themselves 
out  as  a  corporation  when  they  are  thereby  misleading  and  de- 
ceiving the  public.  Misrepresentation  of  this  sort,  to  justify  the 
court  in  refusing  the  relief  must,  however,  be  such  as  is  intended 
to,  or  does  in  fact,  mislead  or  cheat  the  public.  The  name  "Stand- 
ard Distilling  Company,"  without  more,  is  not  sufficient  to  warrant 
the  court  in  assuming  as  a  fact  that  the  complainant  thereby 

"  Moxie  Nerve   Food  Co.   v.   Mo-  of  the  name  Thomas  Nelson  was  up- 

dox,   152  Fed.  493-1907    (C.   C.    R.  held  as  not  being  such  a  false  name  as 

I.).  would  prevent  a  court  from  protecting 

"  Holproof  Hosiery  Co.  v.  Wallach,  it  because,  (1)  not  used  with  fraudu- 

172  Fed.  859.  lent  intent,  but  in  some  way  in  which 

2"  Dale  V.   Smithson,    12  Abb.   Pr.  plaintiff  might  have  used  an  emblem; 

(N.  Y.)  237-1861.     Use  by  plaintiff,  (2)  no  actual  deceit  to  the  public  re- 

whose  name  was  Thomas  Nelson  Dale,  suited. 


Use  of  Term  ^'Established  In"  695 

intended  to  mislead  and  cheat  the  pubHc,  or  that  the  pubhc 
thereby  was  cheated  or  misled. ^^ 

It  is  not  a  valid  defense  to  an  action  for  unfair  competition 
against  a  corporation  that  the  person  whose  name  forms  a  part 
of  the  corporate  name  is  no  longer  connected  with  the  corporation. 
The  fact  of  the  name  of  the  person  being  in  the  corporate  name 
does  not  import  that  he  is  at  the  time  in  question  still  connected 
with  it.27 

§407.  Use  of  Term  "Established  in."  — The  words  ''Es- 
tablished in  1812"  may  not  mean  that  the  person  or  firm  using 
them  were  actually  in  business  in  1812,  or  that  the  building 
now  in  use  was  built  in  1812,  but  "a,  customer  *  *  *  would 
probably  conclude  that  complainant  had  succeeded  in  some  way 
to  the  rights  of  those  who  began  making  thread  in  1812."  -^  Such 
a  phrase  may  be  used  so  as  to  deceive  when  the  date  of  the  es- 
tablishing of  a  concern  is  important. 

§  408.  Abandonment.  —  By  abandonment  is  meant  the  volun- 
tary and  intentional  disuse  or  nonuser  of  the  name  or  mark. 
With  this  may  also  be  classed  conscious  and  intentional  dedica- 
tion to  the  public. 

Abandonment  is  purely  a  question  of  intent.  Mr.  Justice 
Brown  says:  -^  "To  establish  the  defense  of  abandonment  it  is 
necessary  to  show  not  only  acts  indicating  a  practical  abandon- 
ment, but  an  actual  intent  to  abandon.  Acts  which  unexplained 
would  be  sufficient  to  establish  an  abandonment  may  be  answered 
by  showing  that  there  never  was  an  intention  to  give  up  and  re- 
linquish the  right  claimed."  Lapse  of  time  is  merely  one  cir- 
cumstance among  others  to  be  taken  into  account  in  determining 
whether  or  not  an  intentional  abandonment  is  to  be  inferred. 

The  general  rule  is  that  trade-mark  rights  are  not  lost  by  mere 
non-user,  but  that  there  must  be  an  intention  to  abandon  the 
trade-mark,  or  a  distinct  element  of  estoppel  that  will  make  it 
inequitable  to  allow  the  original  owner  to  claim  exclusive  right  to 

28  Block    V.    Standard   Distilling    &  ^^  Clark  Thread  Co.  v.  Armitage,  67 

Distribiding   Co.,   95   Fed.    978-1899  Fed.  896-1895  (C.  C.  S.  D.  N.  Y.), 

(C.  C.  Ohio).  at  p.  898. 

27  Dodge   Stationery   Co.    v.    Dodge,  ^9  Saxlehner  v.  Eisner  &  Mendelson 

145    Cal.    380-1904;    78    Pac.    879;  Co.,  179  U.  S.  19-31-1900;  44  L.  ed. 

Holmes,  Booth  &  Haydens  v.  Holmes,  60;  21  Sup.  Ct.  7. 
Booth  &  Atwood  Mfg.  Co.,  37  Conn. 
278-1870. 


696 


Defenses 


use  the  trade-mark  after  a  period  of  non-user.  It  is  held  in  Baglin 
V.  Cusenier  Co.,^^"  that  neither  non-user  nor  the  adoption  of  new- 
marks  constitutes  an  abandonment,  where  the  circumstances 
surrounding  the  course  taken  are  consistent  with  the  intention 
to  retain  the  right  to  use  the  old  mark.  2^''  Four  years'  disuse  has 
been  held  not  to  constitute  abandonment,-^'^  and  abandonment 
has  not  been  held  to  be  inferred  where  there  was  a  disuse  for  some 
years  occasioned  by  a  statutory  restriction  on  the  sale  of  liquor,-^' 

"  *  *  *  Trade-mark  rights,  like  others  that  rest  in  user, 
may  be  lost  by  abandonment,  non-user,  laches  or  acquiescence. 
Abandonment,  in  the  strict  sense,  rests  upon  an  intent  to  aban- 
don; and  we  have  no  piu-pose  to  qualify  the  authority  of  Sax- 
lehner  v.  Eisner,  179  U.  S.  19,  31,  to  that  effect."  '-">' 

The  intention  to  abandon,  however,  need  not  be  directly 
shown;  it  may  be  inferred  from  the  circumstances. ^^■'^ 

In  the  note  several  cases  are  referred  to  in  which  a  period  of 
disuse  in  connection  with  the  particular  circumstances  of  the  case 
was  held  to  amount  to  abandonment. ^^^      If  a  trader  has  not  only 


'^  221  U.  S.  580. 

29^  In  this  case  Carthusian  Monks 
had  been  compelled  to  leave  France 
and  their  property  seized  by  the 
French  government  and  ultimately 
purchased  by  a  new  company  which 
by  authority  of  the  French  law  manu- 
factured a  cordial  which  was  called 
"Chartreuse."  The  monks  had  gone 
to  Spain  where  they  manufactured 
their  cordial  by  the  original  formula, 
but  were  obHged,  at  least  in  France, 
to  apply  a  different  trade-mark  to  it. 
It  was  held  that  in  the  U.  S.  the  monks 
wore  still  entitled  to  protection  in 
their  trade-mark  "Chartreuse."  As 
to  the  necessity  of  showing  directly  or 
by  inference  an  intention  to  abandon, 
see  Saxlchner  v.  Eisner  &  M.  Co.,  179 
U.  S.  19;  Metcalf  v.  Hanover  S.  M. 
Co.,  204  Fed.  211-216,  240  U.  S.  403- 
19  (1915). 

29c  Burt  V.  Tucker,  178  Mass.,  493;  59 
N.  E.  1111  (there  being  testimony  that 
there  was  no  intention  to  al)andon). 


^^'^  Hannis  Distilling  Co.  v.  Geo.  W. 
Torrey  Co.,  32  App.  D.  C.  530. 

^'^^  Hanover  Milling  Co.  v.  Metcalf, 
240  U.  S.  403-19-(1915.) 

^'^^  Edward  &  John  Burke,  Ltd.,  v. 
Bishop,  175  Fed.  167.  In  Levering 
Coffee  Co.  v.  Merchants'  Coffee  Co.,  39 
App.  D.  C.  151,  certain  evidence  was 
considered  and  held  to  show  an  in- 
tention to  abandon. 

2»»  Blackwell  &  Co.  v.  Diibdell  ^  Co., 
3  Hughes,  151  Fed.  Cas.  1475  (eight 
years'  disuse,  others  having  used  the 
mark  meanwhile) ;  Royal  Baking  Pow- 
der Co.  V.  Raymond,  70  Fed.  376 
(twenty-three  years'  disuse  after  fail- 
ure in  business  held  to  amount  to 
abandonment  andto  preclude  resuming 
use  of  the  mark  when  neither  had 
meanwhile  used  it.)  See  Manhattan 
Medicine  Co.  v.Prooc?,Fed.  Cases,  9026. 
108  U.  S.  218,  2  Sup.  Ct.  436.  (A 
case  rather  of  dress  and  insignia  rather 
than  of  strict  trade-mark.) 


Abandonment  697 

discontinued  for  a  considerable  time  the  use  of  a  trade-mark, 
but  has  allowed  others  to  use  the  same  and  to  build  up  a  business 
on  the  supposition  that  he  has  abandoned  it,  he  may  be  estopped 
from  showing  that  he  did  not  intend  to  abandon.-^ 

There  are  also  certain  acts  that  terminate  the  right  to  use  a 
trade-mark  without  any  actual  intent  to  abandon  it.  For  ex- 
ample, if  one  assumes  to  assign  a  trade-mark  without  transferring 
the  business  in  connection  with  which  it  is  used,  and  at  the  same 
time  discontinues  its  use,  he  loses  his  right  to  the  trade-mark, 
although  the  assignee  does  not  acquire  any  right  to  use  it.  In 
such  a  case  all  right  to  use  a  trade-mark  is  extinguished.^^'  Again, 
one  may  lose  the  right  to  use  a  trade-mark  by  changing  the 
ingredients  of  the  product  to  which  it  is  applied,  for  a  mark  cannot 
truthfully  be  used  for  different  goods  from  those  of  which  it  has 
been  associated.-^-' 

Abandonment  is  not  ordinarily  to  be  inferred  from  the  mere 
fact  that  one  no  longer  uses  the  mark  by  itself,  but  only  in  con- 
junction with  other  words  or  marks. ^^'^ 

Consent  to  the  appropriation  of  trade-marks  is  not  to  be  in- 
ferred from  long  silence  and  knowledge.  "The  use  of  one's 
trade-mark  by  another  is  a  continuing  wrong,  and  the  right  to 
prevent  its  continuance  can  rarely  be  lost  by  mere  delay  of 
assertion.  There  must  be  some  element  of  estoppel."  ^°  Delay 
will  not  bar  the  right  to  injunction,  though  it  may  bar  damages. 

"In  order  to  deprive  a  manufacturer  of  his  right  to  a  trade- 
mark, the  use  of  which  has  been  practically  given  up  for  a  period 
of  five  years,  mere  discontinuance  of  user  for  lack  of  demand, 
though  coupled  with  non-registration  and  non-assertion  of  any 
right,  is  not  enough ;  there  must  be  evidence  of  distinct  intention 

-»''  Pflugh    V.     Eagle     White    Lead  Star  Brewery  Co.  v.  Val  Blatz  Brewing 

Co.,  185  Fed.  769,  772.     (For  about  Co.,  36  App.  D.  C.  534. 

fourteen  years  complainant  had  not  ^'^*  Eisemany.  Schiffer,  157  Fed.  473; 

used  the  mark,  and  others  were  mak-  Layton  Pure  Food  Co.   v.  Church  & 

ing  "continued,  persistent  and  adverse  Dwight  Co.,  182  Fed.  24. 

use"  of  the  mark  and  complainant  '^'^■' Independent  Baking  Powder  Co.  v. 

had  had  distinct  notice  that  the  others  Boorman,  175  Fed.  448. 

claimed  the  right  to  use  it  and  had  "^^  Dr.  Dadirrinn  &  Sons    Co.    v. 

taken  no  steps  to  assert  their  own  Hauenstein,  37  Misc.  23;  Avenarius  v. 

rights.)    For  another  case  in  which  the  Kornely,  139  Wis.  247. 

right   to   a  trade-mark   was  lost   by  '"  Michigan  Condensed  Milk  Co.  v. 

allowing  to  general  use  by  others,  see  Kenneweg  Co.,  30  App.  Cas.  (D.  C.) 

Ford  V.  Foster,  L.  R.  7,  Ch.  App.  611;  491. 


698  Defenses 

to  abandon"  (headnote)."  The  burden  of  establishing  aban- 
donment is  upon  the  party  affirming  it,  and  intention  to  abandon 
will  not  be  inferred  from  nonuser,  especially  if  only  for  a  short 
time,  as  less  than  one  year.^' 

"Abandonment  of  the  right  to  the  exclusive  use  of  a  distinctive 
package  or  other  dress  for  his  goods  by  its  originator,  who  has 
used  it  generally  and  continuously  for  many  years,  is  not  shown 
by  the  fact  that  it  has  been  also  used,  not  only  by  defendant,  but 
by  others,  unless  it  further  appears  that  there  has  been  such  ac- 
quiescence by  complainant  as  to  indicate,  not  only  a  practical 
abandonment,  but  also  an  intention  to  abandon"  (headnote).^^ 
A  dedication  or  abandonment  to  the  public  of  a  trade-mark  or 
trade  name  will  not  be  inferred  where  the  assent  or  acquiescence 
of  the  proprietor  does  not  clearly  appear.  ^^  Mere  delay  in  bring- 
ing suit  does  not  show  intention  to  abandon,  nor  preclude  pro- 
tection.^^ 

''One  who,  after  using  an  alleged  trade-mark  for  a  short  time, 
abandons  it  for  nearly  a  quarter  of  a  century,  has  no  right  to 
resume  its  use  after  it  has  been  long  employed  by  another,  who 
has  built  up  under  it  a  large  and  successful  business"  (head- 
note)  ^^  A  trade-mark  right  is  to  be  deemed  abandoned  by  an 
eight  years'  nonuser,  and  cannot  be  resumed  as  against  one  who 
has  used  it  exclusively  during  that  period  (or  a  substantial  part 
of  it),  especially  if  such  use  has  been  without  intention  to  appro- 
priate a  mark  originated  by  another." 

Complainants'  assignor,  Martin,  was  a  member  of  a  firm  that 
had  for  some  years  used  the  name  "Marguerite"  as  a  trade-mark 
or  trade  name  for  a  tooth  brush.  Gibson,  defendants'  prede- 
cessor, had  at  the  same  time  been  using  the  name  "Margherita." 
Martin's  firm  sued  Gibson  for  infringement  and  he  promxised  to 
discontinue  using  the  name.  The  firm  then  failed,  and  Martin 
went  on  in  business,  using  the  same  name.    When  Martin's 

"  Mouson  &  Co.  V.  Boehm,  L.  R.  "  Williams  v.  Adams,  8  Biss.  452- 

26  Ch.  Div.  398-1884.  1879  (C.  C.  111.).  Fed.  Cas.  17711. 

32  Julian  V.  Hoosier  Drill  Co.,  78  ^^  Raymond  v.  Royal  Baking-Powder 

Ind.  408-1881.  Co.,  29  C.  C.  A.  (7th  Cir.)  245-1898; 

^^  Adiengesellschaft    V.    U.    F.    v.  85  Fed.  231. 

Amberg,  109  Fed.  151-1901  (C.  C.  A.  "  Bhckwell   &    Co.    v.   Dibrell  & 

3d  Cir.).  Co.,  3  Hughes,  151-1878  (U.  S.  C.  C. 

^'Filley   v.   Fassett,   44   Mo.    168-  Va.)-  Fed.  Cas.  1475. 
1869. 


Kinds  of  Laches  699 

firm  failed,  it  abandoned  the  trade-mark  or  trade  name,  and 
Martin's  use  of  it  was  to  be  dated  from  after  the  failure,  and  de- 
fendant was  entitled  to  use  the  similar  name.  Injunction  de- 
nied. ^^ 

In  a  technical  trade-mark  case  a  discontinuance  of  the  use  of 
"Radium"  as  a  trade-mark  for  about  a  year  and  a  half  (the 
word,  meanwhile,  being  used  by  others),  was  deemed  an  aban- 
donment.^^ 

Somewhat  more  than  five  years  after  defendants  began  to 
sell  goods  under  a  name  similar  to  plaintiffs',  plaintiffs  brought 
suit  to  restrain  infringement  and  passing  off.  They  had  known 
of  the  acts  complained  of  for  nearly,  if  not  quite,  the  whole  time 
since  they  were  begun.  Defendants  had  advertised  their  busi- 
ness widely  and  gradually  built  up  a  large  trade.  This  delay 
barred  rehef.^° 

In  another  case  abandonment  was  not  inferred  from  nine 
years'  delay  to  sue  infringer. ^^  Abandonment  of  a  particular 
trade-mark  is  not  to  be  inferred  from  registering  other  trade-marks 
for  similar  goods,  while  not  registering  this.*^  Abandonment  (of 
exclusive  claim)  may  be  found  from  fourteen  years'  failure  to 
sue  or  to  follow  up  the  one  or  two  protests  made.'*^  Abandon- 
ment, in  the  strict  sense,  should  be  supported  by  clear  intention 
of  owner  to  discontinue  use.^* 

§  409.  Kinds  of  Laches.  —  Laches  differs  from  abandonment, 
in  that  the  element  of  intention  is  absent.  Cases  where  this  de- 
fense is  set  up  may  be  divided  into  two  classes:  (1)  where  there 
has  been  mere  delay  in  taking  action,  and  (2)  where  there  has 
been  such  acquiescence  as  to  make  it  inequitable  for  the  suitor 
to  claim  the  rights  originally  enjoyed  by  him  against  the  public 
at  large,  or  against  the  particular  defendant.  The  application 
of  the  equitable  doctrine  of  laches  in  unfair  competition  cases 
differs  somewhat  from  its  apphcation  in  other  branches  of  equi- 
table jurisdiction. 

38  Deitsch  v.  George  R.  Gibson  Co.,  *^  Layfon  P.  F.  Co.  v.  Church  &  D. 
155   Fed.   383-1907   (C.   C.   N.   Y.),      Co.,  182  Fed.  35,  41. 

Hough,  J.  "2  Layton  P.  F.  Co.  v.  Church  &  D., 

39  Eiseman  v.  Schiffer,  157  Fed.  473-      182  Fed.  24,  27. 

1907  (C.  C.  N.  Y.).  ^^Pflugh  v.  Eagle  White  Lead  Co., 

«  McCaw,   Stevenson   &   Orr,  Ltd.,  185  Fed.  769. 

V.  Lee  Bros.,  23  R.  P.  C.  1-1905  (Ch.  "*  Hanover  Milling  Co.  v.  Metcalf, 

Div.).  240  U.  S.  403  (1915.) 


700  Defenses 

§  410.  Laches,  in  the  Sense  of  Mere  Delay.  —  The  proprietor 
of  a  trade  name  has  no  occasion,  and  is  not  in  duty  bound  to  in- 
terfere with  one  using  a  similar  name,  unless  and  until  such  per- 
son enters  his  field  and  seeks  to  deprive  him  of  his  trade,  and  until 
his  business  is  actually  affected  by  unfair  competition.  Prior 
inaction  on  his  part  does  not  constitute  Zac/ie.s/^"  Even  the  fact 
that  one's  business  is  encroached  upon  does  not  of  itself  require 
one  to  act,  under  penalty  of  forfeiting  the  right  to  injunctive 
relief.  Mere  delay,  unless  in  any  particular  jurisdiction  the  case 
falls  within  some  statute  of  hmitations,  is  usually  no  bar  to  re- 
lief by  injunction. 

The  question  cf  laches  and  estoppel  in  unfair  competition 
cases  has  become  of  much  greater  importance  since  the  decision 
of  the  Supreme  Court  in  the  Hanover  Star  Milling  Co.  v.  Allen 
&  Wheeler  Co.,^^  for  on  acts  of  estoppel  and  laches  on  the  part  of 
the  first  user  may  now  depend  the  right  of  the  second  user  to 
territory  which  he  has  occupied  by  use  of  the  mark  in  question. 
Nearly  twenty  years'  delay  by  a  prior  user  of  a  trade-mark  or  name 
("Baltimore  Club"  for  whiskey),  but  almost  entirely  in  different 
territory,  is  laches  which  may  preclude  a  plaintiff  from  relief 
against  a  defendant  who  had  developed  large  business  under  long 
use  of  same  name  in  different  territorJ^''^ 

In  Fullwood  V.  Fullwood,'^'^  the  defendant  alleged  that,  for  be- 
tween two  and  three  years,  plaintiff  had  known  all  the  material 
facts  in  the  pleadings,  and  consequently  set  up  the  defense  of  laches. 
The  court  said:  "The  plaintiff  knew  of  all  the  material  facts 
which  have  been  brought  before  me  to-day  (in  1875);  he  com- 
menced his  action  in  November,  1876.  In  my  opinion  that 
delay,  and  it  is  simply  delay,  is  not  sufficient  to  deprive  the  plain- 
tiff of  his  rights.  The  right  asserted  by  plaintiff  in  this  ac-' 
tion  is  a  legal  right.  He  is,  in  effect,  asserting  that  the  de- 
fendants are  liable  to  an  action  for  deceit.  It  is  clear  that 
such  an  action  is  subject  to  the  Statute  of  Limitations,  and  it 
is  also  clear  that  the  injunction  is  sought  merely  in  aid  of  the 
plaintiff's  legal  right.  In  such  a  case  the  injunction  is,  in  my 
opinion,  a  matter  of  course  if  the  legal  right  be  proved  to  exist. 

*""  Sart&r  v.  Schaden,  125  Iowa,  69&-  "  Thos.  G.  Carroll  &  Son  Co.  v. 

1904;  101  N.  W.  511.  Mclbmne   &   Baldwin,    183   Fed.   22 

«  208  Fed.  513;    125  C.  C.  A.  515;  (C.  C.  A.  2d.  Cir.) 

aflfimied  240  U.  S.  403,  1915.  «  9  Ch.  Div.  176-79-1878. 


First  User  of  Mark  May  Revoke  License         701 

In  saying  that  I  do  not  shut  my  eyes  to  the  possible  existence 
in  other  cases  of  a  purely  equitable  defense,  such  as  accjuies- 
cence  or  acknowledgment,  and  the  various  other  equitable  defenses 
which  may  be  imagined.  But  mere  lapse  of  time,  unaccompanied 
by  anything  else  (and  to  that  I  confine  my  observations)  has,  in 
my  judgment,  just  as  much  effect,  and  no  more,  in  barring  a 
suit  for  an  injunction  as  it  has  in  barring  an  action  for  de- 
ceit." 

Citing  this  case,  Chief  Justice  Fuller  in  Menendez  v.  Holt,^^ 
says:  "Nor  will  the  issue  of  an  injunction  against  the  infringe- 
ment of  a  trade-mark  be  denied  on  the  ground  that  mere  pro- 
crastination in  seeking  redress  for  depredations  had  deprived  the 
true  proprietor  of  his  legal  right." 

§  411.  First  User  of  Mark  May  Revoke  License  Implied 
from  Laches. —  The  doctrine  of  laches  as  to  stale  claims  in  mat- 
ters of  trust  does  not  apply  in  full  force  to  unfair  competition 
cases,  where  acquiescence  will  not  usually  be  inferred,  and  even 
if  at  one  time  the  facts  would  justify  a  presumption  of  such  ac- 
quiescence, there  still  exists  in  the  first  user  a  right  of  revocation 
of  such  acquiescence.'^^ 

Judge  Duer,  in  Amoskeag  Manufacturing  Co.  v.  Spear, ^'^  takes 
the  position  that  by  acquiescence  the  owner  of  a  mark  does 
not  lose  his  right,  whether  this  acquiescence  be  expressed  or  im- 
plied; but  that  his  position  is  rather  that  of  one  granting  a  rev- 
pcable  license,  and  he  is  supported  in  this  view  by  Fuller,  C.  J., 
in  Menendez  v.  Holt  (supra). 

Duer,  J.,  says:  "The  consent  of  a  manufacturer  to  the  use  or 
imitation  of  his  trade-mark  by  another,  may,  perhaps,  be  justly 
inferred  from  his  knowledge  and  silence;  but  such  a  consent, 
whether  expressed  or  implied,  when  purely  gratuitous,  may  cer- 
tainly be  withdrawn,  and  when  implied,  it  lasts  no  longer  than 
the  silence  from  which  it  springs;  it  is,  in  reality,  no  more  than  a 
revocable  license.  The  existence  of  the  fact  may  be  a  very 
proper  subject  of  inquiry  in  taking  an  account  of  profits,  if  such 

*8 128  U.  S.  514-23-1888;  32  L.  ed.  In  general,  acquiescence  in  the  use  of  a 

526;  9  Sup.  Ct.  143.  trade  name  or  mark   by  another  is 

*^  McCardel  v.  Peck,  28  How.  Pr.  deemed   to   confer   only   a   revocable 

(N.  Y.)   120-1864.     Controversy  re-  license, 
lated  to  unfair  competition  by  use  of  ^°  4  N.  Y.  Super.  Ct.  599, 

"McCardel  House"  as  name  of  hotel. 


702  Defenses 

an  account  shall  hereafter  be  decreed;  but  even  the  admission 
of  the  fact  would  furnish  no  reason  for  refusing  an  injunc- 
tion." 

Judge  Fuller's  statement  is  this:  "Where  consent  by  the  owner 
to  the  use  of  his  trade-mark  by  another  is  to  be  inferred  from  his 
knowledge  and  silence  merely,  '  it  lasts  no  longer  than  the  silence 
from  which  it  springs;  it  is,  in  reality,  no  more  than  a  revocable 
license,'  "^^citing  Amoskeag  Mfg.  Co.  v. Spear,  supra.  He  continues: 

"So  far  as  the  act  complained  of  is  completed,  acquiescence 
may  defeat  the  remedy  on  the  principle  applicable  when  action 
is  taken  on  the  strength  of  encouragement  to  do  it,  but  so  far 
as  the  act  is  in  progress  and  lies  in  the  future,  the  right  to  the 
intervention  of  equity  is  not  generally  lost  by  previous  delay,  in 
respect  to  which  the  elements  of  an  estoppel  could  rarely  arise. 
At  the  same  time,  as  it  is  in  the  exercise  of  discretionary  juris- 
diction that  the  doctrine  of  reasonable  diligence  is  applied,  and 
those  who  seek  equity  must  do  it,  a  court  might  hesitate  as  to 
the  measure  of  reUef,  where  the  use,  by  others,  for  a  long  period, 
under  assumed  permission  of  the  owner,  had  largely  enhanced 
the  reputation  of  a  particular  brand"  (p.  524). 

In  Schmidt  v.  Brieg,'^^  the  plea  of  laches  was  set  up  for  the  first 
time  in  the  appellate  court.  The  court  there  said:  "The  point 
ought  to  have  been  raised  at  least  at  the  tune  the  motion  for  a 
nonsuit  was  made,  the  facts  having  come  out  in  the  evidence  of 
the  plaintiffs;  but  conceding  for  the  purposes  of  the  discussion 
that,  notwithstanding  the  failure  of  the  defendants  to  set  up  the 
plea  of  laches  until  this  time,  we  think  the  contention  is  not  sup- 
ported by  the  admitted  facts.  The  action  was  commenced 
about  two  years  after  the  plaintiffs  discovered  the  infringements, 
and  the  record  shows  that  plaintiff  had,  prior  to  the  bringing  of 
this  action,  brought  suit  against  other  infringers,  and  that  the  de- 
fendants not  only  had  notice  of  this  prior  litigation,  but  had 
changed  the  color  of  their  label  on  account  of  a  decision  in  the 
court  below.  The  doctrine  of  laches,  as  apphed  to  stale  claims 
in  matters  of  trust,  does  not  apply  with  full  force  to  cases  of  in- 
fringement" (p.  681). 

For  over  fifteen  years  stationers  had  been  selUng  pens  of  other 

51  Julian  V.  Hoosier  Drill  Co.,  78         "  100  Cal.  672-1893;  35  Pac.  623; 
Ind.   408-1881 ;   Taylor  v.   Carpenter,      22  L.  R.  A.  790. 
3  Story,  458-1844  (C.  C.  Mass.). 


Presumption  of  Acquiescence  703 

makers  which  closely  resembled  plaintiffs',  especially  in  the  use 
of  the  arbitrary  nmneral  ''303,"  and  it  did  not  appear  how  far 
plaintiff  had  actual  knowledge  of  specific  acts  of  infringement, 
except  that  he  placed  on  his  boxes  a  caution  to  the  public  against 
the  imitations  that  were  on  the  market.  It  was  held,  that  it 
was  no  defense  that  the  fraud  has  been  multiplied,  and  that  ac- 
quiescence could  not  be  inferred,  and  that  it  was  revocable  if  it 
could  be.  Acquiescence  cannot  be  inferred  from  a  caution  to 
the  public. ^^ 

§  412.  No  Presumption  of  Acquiescence  where  an  Exclusive 
Right  Exists.  —  It  has  been  held  ^^  that  where  a  person  had 
long  used  the  name  ''Blue  Lick"  for  his  spring,  he  had 
acquired  an  exclusive  right  to  the  name,  and  whatever  money 
a  rival  might  have  expended  in  the  purchase  and  improve- 
ment of  an  artesian  well  with  the  purpose  of  using  the  words 
"Blue  Lick"  as  his  trade-mark  in  the  sale  of  water  therefrom, 
was  spent  at  his  own  risk;  for  no  presumption  of  acquies- 
cence by  appellees  in  such  wrongful  appropriation  of  their  prop- 
erty could  arise,  nor  could  they  be  thus  estopped  to  assert  their 
rights. 

§  413.  Material  Delay  Beirs  Right  to  an  Accounting  of  Profits. 
—  But  material  delay  will,  as  a  rule,  bar  the  right  to  an  account- 
ing, although  the  right  to  an  injunction  is  not  lost;  but  it  will 
not,  even  though  it  be  a  delay  of  some  years,  bar  the  right  to 
an  action  at  law  for  damages  for  misuse  of  a  label  or  name  or 
mark.^^  Where  the  proprietors  of  a  spring  take  no  action  for 
thirty  years  against  one  so  labeling  and  selling  artificial  water, 
as  water  from  their  spring,  they  are  precluded  by  laches  from 
demanding  an  account  of  profits  during  that  time.^® 

63  Gillott    V.    Esterbrook,    47    Barb,  natural  water  from  the  Grand  Grille 

(N.  Y.)  455-1867.  Spring,   and   constitutes  unfair  com- 

^*  Northcutt  V.  Turney,  101  Ky.  314-  petition  as   against  those  selling  the 

1897;  41  S.  W.  21.  natural  water.    Amoskeag  v.  Garner, 

^^  Saxlehner  V.  Eisner  &  Mendelson  54    How.    Pr.     (N.    Y.)     297-1876; 

Co.,  179  U.  S.  19-1900;  44  L.  ed.  60;  Cahn  v.  Gottschalk,  14  Daly  (N.  Y.), 

21  Sup.  Ct.  7.  542-1888;  2  N.  Y.  Supp.  13.    It  was 

5fl  La  RepubliqiteFrancaise  v.SchuUz,  held  that  five  years'  delay  in  bringing 

102    Fed.    153-1900   (C.  C.  A.   2d.  suit,   after   notice  of  acts   of  unfair 

Cir.).    Labeling   bottles   of   artificial  competition,  would  bar  an  accounting 

mineral     water     as    "Vichy    (Grand  of  profits,  though  not  the  granting  of 

Grille) "  impUes  that  the  water  is  the  an  injunction,     Bissell  Chilled  Plow 


704 


Dep^enses 


If  defendants  place  on  goods  a  cautionary  notice,  after  a  former 
action  against  them  for  unfair  trading,  and  it  does  not  prove 
sufficient  to  prevent  deception,  the  fact  that  they  attempted 
to  differentiate  by  the  notice  may  be  a  reason  for  refusing  to 
order  an  accounting  of  profits  against  them  on  a  second  injunc- 
tion being  issued." 

§  414.  Laches  May  Bar  Right  to  Order  for  Destruction  of 
Offending  Goods.  —  Laches  will  bar  also  the  right  to  an  order 
directing  destruction  or  delivery  over  of  goods  in  hands  of  de- 
fendant which  infringe  those  of  plaintiff.''^ 


Works  V.  T.  M.  Bisscll  Plow  Co.,  121 
Fed.  357-1902  (C.  C.  Mich.),  involv- 
ing a  delay  of  six  years,  which  barred 
right  to  damages.  Dr.  Peter  H. 
Fahrney  &  Sons  Co.  v.  Rumincr,  153 
Fed.  735-1907  (C.  C.  A.  7th  Cir.). 
Complainant  notified  defendants  to 
desist  from  the  use  of  a  trade  name 
which  constituted  unfair  competition, 
and  defendants  refused  to  do  this. 
Complainant  waited  four  years  before 
proceeding  legally  against  defend- 
ants. Held,  that  whatever  effect  such 
delay  might  have  upon  the  right  to 
damages,  it  did  not  preclude  com- 
plainant from  injunctive  relief.  Low 
V.  FeU,  35  Fed.  361-1888  (C.  C.  E. 
D.  Pa.).  Plaintiffs  were  English 
manufacturers  of  soap  and  perfum- 
ery, especially  of  a  soap  widely  known 
as  "Brown  Windsor  Soap."  T)iey 
had  never  sold  their  own  article  ex- 
tensively in  the  United  States,  but 
for  many  years  imitations  had  been 
made  and  sold  there,  without  inter- 
ference on  the  part  of  plaintiffs,  and 
it  had  been  generally  understood  that 
the  name  and  labels  were  open  to  the 
use  of  the  trade.  Defendant  conceded 
that  plaintiffs  were  entitled  to  an  in- 
junction. Held,  that  they  were  not 
entitled  to  an  account  of  sales  or 
damages.  Harrison  v.  Taylor,  11  Jur. 
N.  S.  408-1865.  Defendants  delayed 
bringing  suit  for  trade-mark  infringe- 


ment for  nearly  a  year.  Held,  that 
although  entitled  to  an  injunction, 
plaintiffs  had  lost  their  right  to  an 
account  of  profits.  Defendants  al- 
lowed one  month  in  which  to  discon- 
tinue using  the  mark.  Worcester 
Brewing  Corp.  v.  Ruder  &  Co.,  157 
Fed.  217-1907  (C.  C.  A.  1st  Cir.). 
Complainant,  after  becoming  aware  of 
unfair  competition  upon  the  part  of 
the  defendant  by  the  use  of  the  trade 
name  of  its  product  ("Sterling  Ale"), 
waited  fifteen  months  before  warning 
defendant  and  sixteen  months  before 
bringing  suit.  The  circumstances  in- 
dicated that  the  defendant  had  no 
fraudulent  intent,  and  he  was  shown 
to  have  expended  a  considerable  sum 
in  advertising  his  competing  product 
after  complainant  had  learned  of  the 
facts  upon  which  unfair  competition 
was  predicated.  Held,  that  (while 
complainant  had  not  lost  the  right  to 
an  injunction)  the  right  to  an  ac- 
counting for  profits  was  waived.  In 
determining  the  period  of  delay  neces- 
sary to  bar  an  accounting,  it  is  an 
important  consideration  whether  de- 
fendant's infringement  was  dehberate 
or  unintentional. 

"  Dr.  A.  Reed  Cushion  Shoe  Co. 
V.  Frew,  158  Fed.  552-1908  (C.  C. 
N.  Y.). 

58  County  Chemical  Co.  v.  Frank- 
enburg,  21  R.  P.  C.  722. 


Laches  which  Bars  Right  to  Preliminary  Injunction    705 

§  415.  Laches  which  Bars  Right  to  Preliminary  Injunction.  — 

A  delay  for  a  considerable  period  in  bringing  suit  may  defeat 
the  right  to  a  'preliminary  injunction,  —  unless  complainant's 
rights  pending  final  hearing  cannot  be  otherwise  protected,  and 
unless  at  the  same  time  the  inconvenience  of  an  injunction  to 
defendant  would  be  much  less  than  the  inconvenience  to  com- 
l^lainant  of  refusing  an  injunction. ^^  Delay  in  suing,  although 
not  precluding  ultimate  injunctive  relief,  will  be  considered 
by  the  court  on  an  application  for  a  preliminary  injunction,  and 
has  often  been  held  to  bar  the  right  to  the  interlocutory  relief.^" 
The  court  will,  if  necessary,  guard  against  the  injury  which  the 
sudden  imposition  of  an  injunction  without  notice  might  cause 
a  defendant.  ' '  When  delay  of  the  owner  of  a  patent  or  trade-mark 
to  prosecute  infringers  has  been  of  a  tendency  to  mislead  the 
public  or  the  defendant  sought  to  be  enjoined  into  a  false  se- 
curity, and  a  sudden  injunction  would  result  injuriously,  it  ought 
not  to  be  granted  summarily,  but  the  complainant  should  be  left 
to  his  relief  at  final  hearing.  So  also  where  as  in  this  instance  the 
extensive  use  of  the  trade-mark  by  others  with  the  implied  ac- 
quiescence of  the  owner  has  contributed  to  give  a  reputation 
and  create  a  demand  for  the  article  to  which  it  has  been  applied 
which  it  would  not  otherwise  have  acquired,  equity  should  not 
by  any  stringent  intervention  assist  the  owner  to  secure  these 
fruits."" 

Other  examples  of  what  has  and  has  not  been  considered  such 
undue  delay  in  suing  as  will  warrant  a  court  in  refusing  a  pre- 
liminary injunction,  are  found  in  the  note.^^ 

^^  Stirling   Silk   Mfg.   Co.   v.   Ster-  December  5,  1871.     "But  I  find  he 

ling  Silk  Co.,  59  N.  J.  Eq.  394-1900;  (plaintiff)  was  in  possession  of  nearly 

46  Atl.  199.  all  the  evidence  in  substance  which 

""  Bissell    Chilled    Plow    Works    v.  he  now  possesses,  in  the  summer  of 

T.    M.    Bissell   Plow   Co.,    121    Fed.  last  year,  and  I  find  no  steps  taken 

357,  at  page  375-1902  (C.  C.  Mich.).  until  that  which  is  called  an  offensive 

"  Estes  V.  Worthington,  22  Fed.  822-  advertisement  appeared.     *     *     *     if 

1885  (C.  C.  S.  D.  N.  Y.).  the  case  stood  on  the  evidence  as  it  is 

«2  Isaacson  v.  Thompson,  41  L.  J.  now  before  me,  and  the  application 

(Ch.)  N.  S.  101-1871.    Plaintiff  knew  had  been  made  in  good  time,  I  should 

of  what  defendant  was  doing.     The  have  felt  it  my  duty  to  grant  the  in- 

four  mistakes  alleged  occurred,  two  in  junction  asked  for.    *    *    *    But  as 

December,  1870,  one  in  January,  1871,  the  plaintiff's  case  is  one  which  must 

one  in  May,  1871.    This  motion  was  be  the  subject  of  judicial  decision,  and 

made    for    a    preliminary    injunction  as  he  has  chosen  to  wait  until  this 


706 


Defenses 


§  416.  Acquiescence  in  the  Sense  of  Inaction  upon  which 
Others  Have  the  Right  to  Rely.  —  "Acquiescence  is  wlicre  a 
l)crson  who  knows  that  he  is  entitled  to  *  *  *  enforce  a 
right  neglects  to  do  so  for  such  a  length  of  time  that  under  the 
circumstances  of  the  case  the  other  party  may  fahly  uifer  that 
he  has  waived  or  abandoned  his  right."  '^^ 

"Where  a  person  tacitly  encourages  an  act  to  be  done,  he 
cannot  afterwards  exercise  his  legal  right  in  opposition  to  such 
consent,  if  his  conduct  or  acts  of  encouragement  induced  the 
other  party  to  change  his  position,  so  that  he  will  be  pecuniarily 
prejudiced  by  the  assertion  of  such  adversary  claim."  ^' 

As  distinguished  from  laches,  in  the  sense  of  mere  delay,  we 


month  of  November,  the  bill  having 
been  filed  on  the  4th  of  November, 
1871,  and  he  having  known  from 
February,  1871,  the  danger  which  had 
existed  all  the  time,  I  do  not  think 
it  is  a  case  in  which  I  am  at  liberty 
to  grant  him  the  injunction  he  asks" 
(at  p.  103).  Edward  &  John  Burke, 
Ltd.,  V.  Bishop,  144  Fed.  838-1906 
(C.  C.  A.  2d  Cir.).  Ten  years'  ac- 
quiescence in  the  conduct  of  the  real, 
though  not  the  nominal,  defendant 
held  to  constitute  such  laches  as  to 
bar  any  right  to  a  preliminary  in- 
junction. C.  0.  Biuiis  Co.  V.  W.  F. 
Burns  Co.,  118  Fed.  944-1902  (C.  C. 
S.  D.  N.  Y.).  "A  preliminary  in- 
junction to  restrain  unfair  compe- 
tition will  not  be  granted  on  con- 
flicting evidence,  where  complainant 
had  known  of  the  purposes  and  prac- 
tices of  the  defendant  for  a  year  and  a 
half  before  commencing  suit,  during 
all  of  which  time  they  were  active 
competitors  in  business"  (headnote). 
Von  Mumm  v.  Steinmetz,  137  Fed. 
168-1905  (C.  C.  S.  D.  N.  Y.).  "Al- 
though unfair  competition,  by  sim- 
ulating the  dress  of  complainants' 
goods,  is  apparently  shown,  a  prelim- 
inary injunction  will  not  be  granted, 
where  it  appears  that  defendant  has 


publicly  used  the  same  dress  for  many 
years"  (headnote).  Havana  Com- 
mercial Co.  X.  Nichols,  155  Fed.  302- 
1907  (C.  C.  S.  D.  N.  Y.),  Lacombe,  J. 
While  mere  delay  will  not  defeat  the 
remedy  by  injunction,  it  may  be 
sufficient  ground  for  denying  a  pre- 
liminary injunction.  Here  the  de- 
fendants alleged  that  they  had  sold 
their  goods  under  the  brand  com- 
plained of  for  nineteen  years,  and 
although  complainant  asserted  that 
this  was  without  the  knowledge  of 
itself  or  its  predecessors,  the  court 
deferred  the  determination  of  all 
questions  until  final  hearing.  Beard 
V.  Turner,  13  L.  T.  N.  S.  747-1866. 
After  deciding  against  plaintiff  on  the 
merits,  the  Vice-Chancellor  deals  with 
the  defense  of  ladies  and  expresses  the 
opinion  that  two  years'  delay  in 
bringing  suit  would  preclude  the  re- 
covery of  damages.  (The  language 
may  be  broad  enough  to  include  in- 
junctive relief  as  also  cut  off  by  the 
delay,  but  the  case  cannot  be  treated 
as  an  authority  to  that  effect.) 

8'  Rapaljc  &  Lawrence's  L.  Diet, 
cited  in  Scott  v.  Jackson,  89  Cal. 
258-62. 

^*  Swain  v.  Seamens,  9  Wall.  254- 
274-1869;  76  U.  S.  254;  19  L.  ed.  554. 


Acquiescence  in  Sense  of  Inaction,  Etc.  707 

have  frequently  the  case  in  which,  during  the  delay,  rights  have 
grown  up  or  equities  arisen  which  make  it  inequitable  to  admit 
the  complainant's  claims.  In  such  case  the  defense  may  most 
conveniently  be  termed  that  of  acquiescence.  It  involves  a 
principle  akin  to  that  of  estoppel.  If  the  proprietor  of  the  name 
or  mark  has  stood  by  and  allowed  others  to  use  it  under  such 
circumstances  and  for  such  a  time  that  his  consent,  or  at  least 
an  attitude  of  noninterference  on  his  part,  may  reasonably  be 
inferred,  he  may  not  cause  others  who  have  acted  upon  the 
strength  of  his  silence  and  inaction  to  lose  the  results  of  the  work 
and  money  expended  on  the  assumption  that  he  consented  thereto. 
At  the  outset  the  name  or  mark  was  unquestionably  his  own, 
but  he  has  allowed  the  public  gradually  to  appropriate  it,  until 
at  last  it  is  publici  juris. 

Two  leading  examples  of  the  loss  of  the  exclusive  right  to  use 
an  originally  distinctive  name  through  acquiescing  in  a  general 
appropriation  of  it,  may  be  found  in  the  Vichy  and  Hunyadi 
cases,  decided  not  long  since  by  the  United  States  Supreme 
Court. 

The  proprietors  of  the  original  French  Vichy  mineral  water 
which  was  named  from  the  place  where  the  springs  were  located, 
had  failed  to  interfere  in  any  way,  while,  for  twenty-five  years, 
the  defendant  had  widely  sold  its  "Saratoga  Vichy,"  and  various 
artificial  waters  were  everywhere  sold  under  the  name  of  Vichy. 
It  was  held,  that  knowledge  of  these  infringements  was  to  be 
presumed  from  their  notoriety,  and  that  the  proprietors  of  the 
original  Vichy  had  allowed  the  name  to  become  general  and  in- 
dicative of  the  character  of  the  water.  ''A  clearer  case  of  laches," 
says  the  court,  ''could  hardly  exist." '^'^  It  will  be  noted  that 
in  this  case,  a  sovereign  state  was  the  complainant,  and  it  was 
objected  that  the  defense  of  laches  was  not  available  against  a 
sovereignty.  On  this  point  it  was  considered  that  where  a  foreign 
sovereign  of  state  sues  in  our  court  on  a  private  or  proprietary 
right,  the  rule  nullum  tempus  occurrit  regi  cannot  be  invoked, 
but  that  the  sovereign  is  subjected  like  any  other  party  to  the 
defense  of  laches,  and  that  this  is  certainly  so  when  the  sovereign 
is  practically  a  nominal  party,  suing  for  the  benefit  of  an  indi- 
vidual. 

85  French  Republic  v.  Saratoga  Vichtj  Spring  Co.,  191  U.  S.  427-37-1903;  48 
L.  ed.  247;  24  Sup.  Ct.  145. 


708  Defenses 

The  rights  of  the  owners  of  the  Hunyadi  waters  were  con- 
sidered in  Saxlehncr  v.  Nielsen, '^'^  where  the  original  proprietor 
of  the  name  "Hunyadi"  as  appHed  to  mineral  waters,  having 
for  years  allowed  the  name  to  be  used  for  other  Hungarian  waters, 
was  held  to  have  lost  his  exclusive  right.  For  facts  in  detail, 
see  Saxlehner  v.  Eisner  &  Mendelson  Co.^"^ 

"Where  an  injunction  has  been  granted  by  this  court,  there 
must,  in  order  to  deprive  the  party  who  has  obtained  the  in- 
junction of  the  right  to  move  for  committal  upon  the  breach 
of  it,  be  a  case  made  out  almost  amounting  to  such  a  license  to 
the  party  enjoined  to  do  the  act  enjoined  against  as  would  en- 
title him  to  maintain  a  bill  against  others  for  doing  that  act. 
The  party  enjoined  must,  I  think,  show  such  acquiescence  as 
would  be  sufficient  to  create  new  right  in  him."  ^ 

§  417.  Test  by  which  to  Determine  Acquiescence.  —  A  lead- 
ing English  case  on  the  subject  is  Ford  v.  Foster, ^^  which  lays 
down  a  rule  by  which  to  ascertain  whether  as  a  result  of  the 
inaction  and  presumable  permission  of  the  original  owner  a 
name  or  mark  has  really  become  public  property,  so  that  it  is 
too  late  for  him  to  assert  his  original  right.  Mellish,  L.  J.,  there 
says:  "Then  what  is  the  test  by  which  a  decision  is  to  be  arrived 
at  whether  a  word  which  was  originally  a  trade-mark  has  become 
publici  juris?  I  think  the  test  must  be,  whether  the  use  of  it 
by  other  persons  is  still  calculated  to  deceive  the  public,  whether 
it  may  still  have  the  effect  of  inducing  the  public  to  buy  goods 
not  made  by  the  original  owner  of  the  trade-mark  as  if  they 
were  his  goods.  If  the  mark  has  come  to  be  so  public  and  in 
such  universal  use  that  nobody  can  be  deceived  by  the  use  of  it, 
and  can  be  induced  from  the  use  of  it  to  believe  that  he  is  buying 
the  goods  of  the  original  trader,  it  appears  to  me,  however  hard 

68 179  U.  S.  43-1900;  44  L.  ed.  77;  without  knowledge  of  complainant's 

21  Sup.  Ct.  16.  rights,  on  learning  of  which  they  had 

6^  179  U.  S.  19.     Gilka  v.  Mihalo-  desisted.    The  court,  finding  no  suffi- 

vitch,  50  Fed.  427-1892  (C.  C.  Ohio),  cient  evidence  that  complainants  had 

Complainants,  who  had  long  sold  a  had  any  notice  of  the  infringement 

cordial   known   as   "Gilka-Kummel,"  until  very  recently,  held  that  laches 

sought  to  enjoin  defendants  from  sell-  was  not  to  be  imputed  to  them, 

ing  in  another  part  of  the  country  an  «« Rodgers  v.  Noivill,  3  De  G.  M.  & 

imitation    cordial.      Defendants    had  G.  614-19-1853. 

been  seUing  in  this  manner  for  some  ^^L.  R.  7  Ch.  611-1872. 
twenty  years,  but,  as  they  claimed. 


Test  by  which  to  Determine  Acquiescence         709 

to  some  extent  it  may  appear  on  the  trader,  yet  practically,  as 
the  right  to  a  trade-mark  is  simply  a  right  to  prevent  the  trader 
from  being  cheated  by  other  persons,  goods  being  sold  as  his 
goods  through  the  fraudulent  use  of  the  trade-mark,  the  right 
to  the  trade-mark  must  be  gone"  (at  p.  628). 

The  test,  therefore,  is  whether  or  not  the  pubhc  will  be  so  de- 
ceived, by  a  general  use  of  the  name  or  mark  as  to  believe  when 
they  buy  goods  bearing  that  name  or  mark  that  they  are  getting  the 
particular  goods  of  the  one  who  first  used  the  mark.  If  the  name 
has  become  dissociated  from  the  personahty  or  ownership  of  an 
individual,  it  is  henceforth  the  general  generic  name  of  the  article. 

In  the  ''Yorkshire  Relish"  case,  Powell  v.  Birmingham  Vinegar 
Brewery  Co.,^^  the  court  said:  "There  is  another  way  in  which  a 
name  originally  a  good  trade  name  may  lose  its  character  and 
become  publici  juris,  i.  e.,  where  the  first  person  using  the  name 
does  not  claim  the  right  to  prevent  others  from  using  it,  and  al- 
lows other  persons  to  use  it  without  complaint.  The  name  then 
comes  to  denote  the  article  and  nothing  more;  the  name  becomes 
publici  juris  and  anyone  who  is  at  liberty  to  make  the  article. 
can  call  it  by  the  name  by  which  it  is  usually  known.  Ford  v. 
Foster  (supra)  is  the  leading  authority  on  this  head.  No  name, 
however,  can  become  publici  juris  in  this  way,  so  long  as  the  per- 
son originally  entitled  to  the  use  of  the  name  asserts  his  rights  in 
that  respect.  Moreover  it  is  for  those  who  assert  that  a  trade 
name  has  become  publici  juris,  to  prove  it"  (p.  73). 

The  fact  that  there  has  been  long  continued  use  of  the  name, 
or  a  similar  name,  mark,  or  dress  by  others  than  the  claimant, 
at  all  events  throws  the  burden  upon  him  to  prove  the  exclusive 
right,  and  the  larger  and  more  general  the  use  by  others  has 
been,  the  stronger  will  be  the  evidence  required  of  him.  It  is 
also  said  that:  "Where  persons  come  and  object,  in  whatever 
form,  to  the  use  of  a  trade-mark  which  has  been  used  for  a  great 
number  of  years,  it  does  not  follow,  as  a  matter  of  course  that  the 
use  for  a  great  number  of  years  is  an  absolute  bar  to  obtaining  an  in- 
junction; but,  most  certainly,  it  throws  on  those  who  object  to  the 
use,  the  onus  of  proving  that  it  was  originally  a  fraudulent  use,  and 
that  it  is  calculated  to  deceive;  and  very  much  stronger  evidence  is 
required  in  such  a  case  where  there  has  been  a  longer  user."  ^^ 

"  2  Ch.  54-1896.  "  In  re  Heaton,  L.  R.  27  Ch.  Div. 

570-76-1884. 


710  Defenses 

As  these  cases  just  cited  state,  long  general  use  is  seldom  re- 
garded as  conclusive  on  the  rights  of  the  original  owner,  but 
merely  throws  a  burden  proportionate  to  the  length  of  the  use 
on  the  owner  in  asserting  a  right  to  the  mark.  In  fact,  certain 
cases  say  that  mere  delay,  "procrastination"  as  the  United 
States  Supreme  Court  puts  it,'^^  may  be  ground  for  denial  of 
an  injunction. 

Wliile,  in  general,  mere  delay  in  the  enforcement  of  a  clear 
right  against  one  who  infringes  a  trade-mark  or  is  guilty  of  un- 
fair competition  does  not  bar  an  action  for  an  injunction,  yet 
long  delay  under  circumstances  importing  acquiescence  in  the 
acts  complained  of  will  preclude  injunctive  relief.  This  was  ap- 
plied in  a  case  where  for  eight  years  there  had  been  acquiescence 
without  objection  and  with  knowledge  of  the  facts.^^ 

§  418.  Defense  that  Plaintiff  Violated  Some  Federal  Statute 
Regarding  Restraint  of  Trade,  or  Monopoly.  —  Alleging  and 
proving  such  acts  as  these  do  not  constitute  a  defense  in  unfair 
competition  cases,  because  the  relief  granted  in  such  cases  "does 
not  involve  the  enforcement  of  the  alleged  illegal  contract."  '''* 
The  existence  of  such  contracts  to  which  plaintiff  is  a  party  "does 
not  destroy  his  right  to  protection  against  infringement  on  trade 
rights."  ^^ 

'^Menendez    v.    Holt,    128    U.    S.  ''^Coca-Cola v. Gay-Ola  Co., 211  Fed. 

514-1888;  32  L.  ed.  526;  9  Sup.  Ct.  942;  citing  Brown  Saddle  Co.  v.  Troxcl, 

143.  98  Fed.  620;  Camors  v.  McConnell, 

''^Prince's    Metallic    Paint    Co.    v.  140  Fed.  412;  Weyman-Burton  Co.  v. 

Prince  Mfg.  Co.,  57  Fed.  938-1893  Old  Indian  Snuff  Mills,  XSiTFed-lQlb; 

(C.  C.  A.  3d  Cir.).  Coca   Cola   v.   Nashville   Syrup    Co., 

74  Coca  Cola  v.  Deacon  Brawn  Co.,  200  Fed.  153. 
200  Fed.  105. 


CHAPTER  XXV 

Profits  and  Damages 

Section  419.  Damages  recoverable  in  unfair  competition  cases. 

420.  Confusion  as  to  right  to  profits  as  distinguished  from  damages. 

421 .  Adequate  compensation  to  the  plaintiff  is  the  purpose  of  the  court 

in  granting  profits  and  damages. 

422.  Damage  to  reputation  of  product  to  be  reckoned  as  well  as  loss  of 

profits. 

423.  Deduction  of  defendant's  expenses  from  profits. 

424.  When  an  account  will  not  be  ordered. 

425.  Profits  given  to  plaintiff  may  be  Umited  to  those  resulting  from 

defendant's  fraud. 

426.  What  profits  may  be  recovered. 

427.  How  to  determine  what  are  profits. 

428.  When  laches  will  bar  an  accounting. 

429.  Notice  of  infringement. 

430.  Damages  in  suits  at  law  for  unfair  competition. 

431.  Good  faith  as  an  excuse  for  relieving  defendant  from  paying 

damages. 

There  is  much  general  similarity  between  the  rules  in  England 
and  in  the  United  States  governing  the  amount  of  money  recovery 
that  can  be  had  by  one  unlawfully  injured  by  unfair  competition. 
The  most  striking  difference  is  that,  in  the  United  States  the  de- 
fendant's profits  are  often  allotted  to  the  injured  party  as  a  part  of 
his  damages,  while  in  England,  in  equity  the  complainant  is  re- 
quired to  elect  between  damages  and  profits,  and  cannot  have 
both. 

§  419.  Damages  Recoverable  in  Unfair  Competition  Cases.  — 
In  this  country,  both  in  the  State  and  Federal  courts  full  and 
adequate  money  compensation  may  be  recovered  in  cases  of 
unfair  competition  of  every  kind,  including  cases  of  infringe- 
ment of  trade-marks  registered  under  the  United  States  statute. 
The  effort  seems  to  have  been  made  not  only  to  recompense  the 
plaintiff  for  the  wrongful  invasion  of  his  rights,  but  to  go  further 
and  adjust  the  rules  by  which  the  amount  of  his  money  recom- 
pense is  measured,  in  such  a  way  as  to  deter  parties  from  in- 
fringement or  misappropriation  of  industrial  property. 

This  rule  is  embodied  in  the  Federal  Trade-mark  Act  which 
provides:  "The  several  courts  vested  with  jurisdiction  of  cases 

711 


712  Profits  and  Damages 

arising  under  the  present  act  shall  have  power  to  grant  injunctions, 
according  to  the  course  and  principles  of  equity,  to  prevent  the 
violation  of  any  right  of  the  owner  of  a  trade-mark  registered  under 
this  act,  *  *  *  and  upon  a  decree  being  rendered  *  *  *  the 
complainant  shall  be  entitled  to  recover,  in  addition  to  the  profits 
to  be  accounted  for  by  the  defendant,  the  damage,  the  complainant 
has  sustained.  *  *  *  xhe  court  shall  have  the  same  power 
to  increase  such  damages,  in  its  discretion,  as  is  given  by  section 
sixteen  of  this  act  for  increasing  damages  found  by  verdict  in 
actions  of  law."  ^ 

§  420.  Confusion  as  to  Right  to  Profits  as  Distinguished  from 
Damages.  —  In  some  jurisdictions,  equity  courts  lack  power  to 
assess  unliquidated  damages.  In  Martin  v.  Martin^''  (N.  J.), 
Swayze,  J.,  says:  "The  general  rule  is  that  unliquidated  damages 
for  a  tort  cannot  be  recovered  in  equity."  In  hamper t  v. 
Judge  Co.,^^  Roy,  J.,  says:  "The  remedies  in  equity  and  at  law 
are  radically  different.  Equity  gives  as  damages  the  profits  of 
the  defendant,  while  the  law  limits  them  to  the  loss  suffered  by 
plaintiff.  Equity  restrains  future  wrongs  by  injunction.  Law 
seeks  to  prevent  such  future  violations  by  inflicting  exemplary 
damages  for  past  offences." 

This  difference  in  the  function  of  the  two  jurisdictions  was 
recognized  in  England  in  the  framing  of  the  Judicature  Acts, 
which  contain  specific  legislation  giving  power  to  law  courts  to 
issue  injunctions.^ 

If  our  equity  courts  are  actually  limited  to  awarding  to  a  plain- 
tiff only  the  actual  profits  of  the  defendant,  plaintiffs  in  equity 
in  many  unfair  competition  suits  must  go  without  adequate 
compensation  for  the  injuries  inflicted  on  them  by  the  defendant, 
unless  two  suits  are  instituted  for  each  cause  of  action,  one  in 
equity  for  an  injunction  and  one  at  law  for  damages.  Recognizing 
this  fact  many  courts  have  sought  to  find  a  way  to  grant  an  in- 
junction and  at  the  same  time  give  complete  damage  satisfaction 
in  one  proceeding.    Various  means  of  doing  this  have  been  used: 

1.  Where  plaintiff's  loss  will  not  be  met  by  the  mere  profits  of 
defendant,  by  causing  the  master  to  find  not  only  the  profits  of 
defendant  but  also  plaintiff's  total  loss,  and  assessing  against 

1  Federal  Trade-Mark  Act  Feb,  20,  ^^  Lampert  v.  Judge  Co.,  238  Mo. 

1905,  section  19.  409-1911,  141  S.  W.  1095. 

»"  75  N.  J.  Eq.  257.  ^  21  and  22  Vict.  C.  27. 


Adequate  Compensation  to  Plaintiff  713 

defendant  not  only  the  profits  but  an  amount  as  damages  suf- 
ficient to  bring  the  sum  up  to  the  total  amount  of  plaintiff's  loss.^ 

2.  By  causing  the  master  to  find  a  sum  in  addition  to  profits 
that  represents  compensation  for  injury  infiicted  by  defendant 
upon  reputation  of  plaintiff's  goods,  provided  there  be  a  basis  for 
computing  it."^ 

3.  By  causing  the  master  to  assess  damages  and  profits  on  the 
ground  that  "an  equity  court,  having  once  obtained  full  jurisdic- 
tion, both  of  the  subject-matter  and  the  parties,  will  administer 
full  redress  including  'damages  and  profits'  technically  so  called."^ 

4.  Giving  plaintiff  damages  in  addition  to  profits  where  ''the 
circumstances  are  aggravated."  ^  Such  is  really  an  award  of 
punitive  damages. 

5.  Granting  an  allowance  to  plaintiff  in  the  nature  of  punitive 
damages  where  an  award  of  profits  will  not  compensate  or  the 
damages  of  plaintiff  cannot  be  accurately  measured. 

§  421.  Adequate  Compensation  to  the  Plaintiff  is  the  Purpose 
of  the  Court  in  Granting  Profits  and  Damages.  —  In  Baker  v. 
Slack f  Jenkins,  J,,  said:  "The  injured  party  is  entitled  to  full 
compensation  for  the  injury,  but  how  shall  that  be  measured? 
Manifestly,  the  profits  which  the  infringer  has  made  would  not 
in  all  cases  be  compensation  to  the  injured.  The  latter's  loss  in 
part  was  in  the  failure  to  acquire  just  and  deserved  gains;  also  in 
the  injury  to  the  reputation  of  his  product  by  reason  of  the  sub- 
stitution of  the  spurious  article.  The  latter  element  is  difficult, 
if  not  impossible  of  accurate  admeasurement.  It  can  only  be 
approximately  compensated  by  an  allowance  in  the  nature  of 
punitory  damages  resting  largely  in  discretion."  ^ 

In  Benkert  v.  Feder,"^"  Sawyer,  J.,  said:  "The  trade-mark  sells 
the  whole  article,  however  inferior  and  injurious  in  that  partic- 
ular, and  prevents  the  sale  of  the  owner's  goods  of  equal  amount. 
At  least  that  is  the  fraudulent  purpose  and  the  natural  tendency, 
whether  always  accomplished  or  not;  and  the  injured  party 
should  have  at  least  the  whole  profit  resulting  from  the  wrongful 

'  Hennessy  v.  Wilmerding,  103  Fed.         "  Browne  on  Trade-Marks,  2d  ed., 
90;  Forster  v.  Cutter-Tower,  215  Mass.      p.  503. 
136,  101  N.  E.  1083.  -^^  130  Fed.  514-1904  (C.  C.  A.  7th 

*Merriam    v.    Saalfield,    198   Fed.      Cir.). 
369.  '  Regis  v.  Jaynes,  191  Mass.  245. 

5  Paul  on  Trade-Marks,  §  326.  '"  34  Fed.  534-535-1888  (C.  C.  N 

D.  Cal.). 


714  Profits  and  Damages 

act,  and  such  I  understand  and  hold  the  rule  to  be.  The  damage 
may  be  much  more  arismg  from  destroymg  the  reputation  of  the 
owner's  goods." 

In  Hennessy  v.  Wilmerding  Loewe  Co.,''^  it  was  said:  "with 
regard  to  that  part  of  the  master's  report  which  awards  com- 
plainants $50  damage,  to  the  reputation  of  their  brandy,  re- 
spondent objects,  and  contends  that  the  master  is  not  authorized 
by  law  to  impose  damages  exceeding  the  profits  realized  on  the 
eighteen  bottles  of  spurious  brandy.  The  interlocutory  decree 
herein  orders  a  reference  to  the  master  '  to  take,  state,  and  report 
an  account  of  profits  and  damages  herein.'     *     *     * 

"  Full  compensation  requires  that  not  only  should  an  account 
be  taken  of  the  profits,  but  that  the  damage  inflicted  upon  the 
reputation  of  complainants '  goods  by  the  sale  of  respondent's  com- 
pound under  an  miitation  of  complainants'  trade-mark  should  be 
assessed  by  the  master.  The  assessment  the  master  has  made  and 
fixed  the  damages  at  the  sum  of  $50,  which  this  court  considers 
to  be  a  reasonable  amount,  in  view  of  the  circumstances,  and  for 
which  the  master  has  given  sufficient  reasons." 

In  Foster  Mfg.  Co.  v.  Cutter-Tower  Co.,''"  Sheldon,  J.,  said:  ''The 
plaintiff  in  such  a  case  as  this  may  to  be  sure  suffer  some 
particular  loss  or  damage  for  which  the  receipt  of  the  defendant's 
profit  would  not  compensate  hun.  If,  for  example,  the  defend- 
ant has  attempted  to  undersell  him,  has  introduced  what  is 
galled  a  'cut  throat  competition,'  thus  cutting  down  the  plaintiff's 
profits  without  correspondingly  increasing  his  own,  or  if  the 
defendant  has  cheapened  his  production  by  the  use  of  inferior 
materials,  or  by  unsuitable  processes  of  manufacture,  and  thus 
has  depreciated  the  value  of  the  plaintiff's  trade-name,  or  of 
the  work  or  symbols  to  which  the  plaintiff  has  acquired  a 
right,  or  otherwise  has  injured  the  reputation  of  the  plaintiff's 
goods  and  thereby  caused  an  appreciable  loss  to  the  maker,  in 
addition  to  that  caused  by  the  actual  sale  which  the  defendant 
has  made,  the  plaintiff  should  be  allowed  to  recover  for  such  a 
loss  besides  taking  the  defendant's  profits,  if  the  plaintiff  has 
claimed  and  is  allowed  such  profits."  ^ 

'^  103  Fed.  90-93-1900  (C.  C.  N.  D.  ^45;  77  N.  E.  774;  Forster  Mfg.  Co.  v. 

Cal.).  Cutter-Tower  Co.,  211  Mass.  223;  97 

^  215  Mass.  136;  101  N.  E.  1083.  N.  E.  749.     See   above,  Rowley   v. 

8  Citing  Regis  v.  Jayties,  191  Mass.  Rowley,  193  Fed.  390;  113  C.  C.  A.  386. 


Adequate  Compensation  to  Plaintiff  715 

In  Sharpless  Co.  v.  Lawrence,^"  it  was  said:  "Courts  of  Equity, 
in  granting  injunctive  relief  in  cases  of  unfair  competition,  have 
sometimes  decreed  that  the  plaintiffs  should  recover  of  defend- 
ant, not  only  damages,  but  the  profits,  gains  and  advantages  that 
have  accrued  to  the  defendant  by  reason  of  his  unfair  com- 
petition. Such  an  enlargement  of  the  scope  of  the  decree  is 
generally  made  on  the  ground  that  the  unfair  competition  is 
adjudged  to  have  been  willful  and  fraudulent,  and  the  recovery 
of  profits  in  such  cases  is  a  punitive  addition  to  the  ordinary 
decree  of  compensatory  damages." 

In  Hamilton-Brown  Shoe  Co.  v.  Wolf  Bros.  &  Co.,^  the  theory 
on  which  profits  must  be  accounted  for  by  the  infringer  of  a  trade- 
mark is  stated  as  follows: 

"  The  infringer  is  required  in  equity  to  account  for  and  yield 
up  his  gains  to  the  true  owner,  upon  a  principle  analogous  to  that 
which  charges  a  trustee  with  the  profits  acquired  by  wrongful 
use  of  the  property  of  the  cestui  que  trust.  Not  that  equity  as- 
sumes jurisdiction  upon  the  ground  that  a  trust  exists.  As  pointed 
out  in  Root  V.  Lake  Shore  &  M.  S.  R.  Co.  105  U.  S.  189,  214,  26 
L.  ed.  975,  984;  and  Tilghman  v.  Proctor,  125  U.  S.  136,  148,  31 
L.  ed.  664,  668,  8  Sup.  Ct.  Rep.  894  (patent  cases),  the  jurisdic- 
tion must  be  rested  upon  some  other  equitable  ground,  —  in  ordi- 
nary cases,  as  in  the  present,  the  right  to  an  injunction  —  but  the 
court  of  equity,  having  acquired  jurisdiction  upon  such  a  ground, 
retains  it  for  the  purpose  of  administering  complete  relief,  rather 
than  send  the  injured  party  to  a  court  of  law  for  his  damages. 
And  profits  are  then  allowed  as  an  equitable  measure  of  compen- 
sation, on  the  theory  of  a  trust  ex  maleficio.  In  the  courts  of 
England,  the  rule  seems  to  be  that  a  party  aggrieved  must  elect 
between  damages  and  profits,  and  cannot  have  both.  In  this 
country,  it  is  generally  held  that  in  a  proper  case,  both  damages 
and  profits  may  be  awarded." 

Where  the  circumstances  are  aggravated,  complainants  are 
entitled  to  damages  for  injury  to  the  reputation  of  their  goods. 
Full  compensation  requires  that  not  only  should  an  account  be 
taken  of  the  profits  but  that  the  damage  to  the  reputation  of  com- 
plainant's goods  by  the  sale  of  defendant's  product  should  be 
assessed  by  the  master. 

8"  213  Fed.  423-42&-1914  (C.  C.  A.         '  240  U.  S.  251. 
3d  Cir.). 


716  Profits  and  Damages 

In  Williams  v.  Mitchell,  Mitchell  v.  Williams^  the  court  said: 
''The  complainants  also  assert  error  in  that  the  decree  denied 
compensation  for  past  unfair  competition.  In  this  respect,  also, 
we  think,  the  court  was  in  error.  The  decree  declares  that  the 
defendants,  by  their  imitation  of  the  complainant's  advertise- 
ments, had  been  guilt}'  of  deceiving  purchasers  and  the  pubUc 
into  believing  that  the  game  boards  of  their  make  were  the 
game  boards  made  by  the  complainants.  It  declares  an  invasion 
of  the  complainants'  rights,  and  the  complainants  are  entitled, 
upon  proper  proof,  to  compensation  to  the  extent  of  the  inva- 
sion." 10 

It  has  been  held,  however,  that  the  plaintiff  may  not  recover 
in  addition  to  the  profits  made  by  the  defendant,  those  which 
the  plaintiff  lost  the  opportunity  of  making,  as  this  would  be 
double  compensation  for  the  same  sales,  ^^  but  this  rule  is 
questioned  (see  following  section.) 

The  plaintiff  must  demand  both  profits  and  damages  in  its 
pleadings  and  show  that  it  is  entitled  to  the  same  on  the  trial  of 
the  action,  as  an  appellate  court  will  not  modify  a  decree  ordering 
either  an  accounting  of  profits  or  the  payment  of  damages,  to 
include  both.^^ 

If  a  suit  at  law  is  brought  for  deceit,  the  plaintiff  must  prove  the 
damages  he  actually  sustained  as  in  any  other  tort  action,  and  in 
default  of  such  proof  can  recover  only  nominal  damages. ^^ 

Most  suits  for  unfair  competition  are  brought  in  equity,  and  in 
equity  the  reUef  is  twofold,  the  injunction  and  a  decree  for  an 
accounting  of  profits  as  an  element  of  damage.  ^^ 

^  106  Fed.  168-172-1901.  Westcott  Chiwk  Co.  v.  Oneida  N.  Chuck 

^0  Regis  v.  Jayms,  191  Mass.  245;  Co.,  199  IS!.  Y.  247;  Regis  v.  Jayyies,  191 

Westcott  Chiwk  Co.  v.  Oneida  N.  Chuck  Mass.  245, 

Co.,  199  N.  Y.  247;  Walter  Baker  v.  ^*  Merriam   v.  Saalfield,   198    Fed. 

Slack  (C.  C.  A.),  130  Fed.  514.  369;  Fairbank  Co.  v.  Windsor,  124  Fed. 

^^Forster  Mfg.  Co.  v.  Cutter-Tower  200;  Saunjer  v.  Kellogg,  9  Fed.  601; 

Co.   (supra);  Atlantic  Milling  Co.  v.  Benkert  v.  Fader,  24  Fed.  53i;  Avery  & 

Rowland,   27   Fed.    24;   Fairbank   v.  Sons  v.  Meikle,  85  Ky.  435;  El  Modello 

Wimlsor,  118  Fed.  96.  Cigar  Mfg.  Co.  v.  Gato,  25  Fla.  886; 

"  P.    E.    Sharpless    v.    Lawrence,  Graham  v.  Plate,  40  Cal.  593 ;  Edelslen 

213  Fed.  423  (C.  C.  A.  3d  Cir.  1914);  &  EdeUten  v.  Edelsten,  1  DeGex  J.  &  S. 

Forster  Mfg.  Co.  v.  Cuiter-Tower  Co.,  185;  Modesto  Creamery  v.  Stanislaus 

supra;  Walter  Baker  v.  Slack,  130  Fed.  Creamery    Co.,    168    Cal.    289-1914; 

514.  142  Pac.  R.  845;  Regis  v.  Jayjies,  191 

^^  Singer  v.  June,   103  U.  S.   169;  Mass.  245.     The  last  ca.se  says :"  The 


Damages  to  Reputation  of  Product  to  be  Reckoned    717 

§  422.  Damage  to  Reputation  of  Product  to  be  Reckoned  as 
Well  as  Loss  of  Profits.  —  American  courts  are  not  inclined  to 
limit  compensation  to  the  profits  made  by  the  infringing  party, 
but  to  allow  those  as  a  minimum  measure  of  damages,  and,  in 
addition,  enough  to  cover  any  damage  to  reputation.  Thus  in 
Graham  v.  Plate,^^  it  was  held  that  where  a  trade-mark  has 
been  infringed,  the  whole  profits  from  sales  of  the  infringing 
goods  are  the  minimum  measure  of  damages,  and  damages  are 
not  limited  to  such  profits.  This  rule  is  based  on  the  fact 
that  repayment  of  profits  would  not  in  all  cases  completely 
indemnify  the  plaintiff.  The  damage  has  been  said  to  consist  of 
two  elements:  (1)  loss  of  the  plaintiff's  profits;  (2)  injury  to  the 
reputation  of  the  product;  and  an  award  to  cover  one  will  not 
recompense  loss  on  account  of  the  other.  ''The  question  of  the 
true  measure  of  damages  in  cases  of  this  sort  is  an  interesting  one. 
The  injured  party  is  entitled  to  full  compensation  for  the  injury, 
but  how  shall  that  be  measured?  Manifestly,  the  profits  which 
the  infringer  had  made  would  not  in  all  cases  be  compensation 
to  the  injured.  The  latter's  loss  in  part  inheres  in  the  failure  to 
acquire  a  just  and  deserved  gain;  in  the  injury  to  the  reputation  of 
his  product  by  reason  of  the  substitution  of  the  spurious  article. 
The  latter  element  is  difficult,  if  not  impossible,  of  accurate 
measurement.  It  can  only  be  approximately  compensated  by  an 
allowance  in  the  nature  of  punitory  damages,  resting  largely  in 
discretion.  But  as  to  the  actual  loss,  is  it  not  more  reasonable  to 
say  that  the  loss  sustained  is  the  profit  which  the  injured  party 
would  have  made  if  the  genuine  goods  had  been  supplied,  and  not 
the  profit  which  the  party  inflicting  the  injury  actually  made 
by  the  unlawful  sale?  That  is  to  say,  ought  not  the  injured  party 
to  receive  the  difference  between  the  cost  to  him  of  the  manufac- 
ture of  his  article  and  the  price  at  which  he  is  able  to  dispose  of 
it  in  the  market,  together  with  such  sum  as  the  court  in  its  discre- 
tion should  think  the  genuine  article  had  lost  in  its  reputation  by 
substitution  of  the  spurious  article?    Should  not  regard  be  had  to 

general  principle  that  one  who  has  from    the    sale    of    the    goods    upon 

shown  that  he  is  entitled  to  the  ex-  which     the     trade-mark     has     been 

elusive  use  of  a  trade-mark  may  in  wrongfully   used,    is    not   denied   by 

equity    recover    from    an    infringer  the  defendants,  and  is  abundantly  sus- 

against  whom  he  obtains  an  injunc-  tained  by  authority." 

tion  the  amount  of  the  profits  arising  ^^  40  Cal.  593-1871. 


718  Profits  and  Damages 

complainant's  loss,  rather  than  to  defendant's  profits?  (citing 
Hall  V.  Stern  (20  Fed.  788,  C.  C.  S.  D.  N.  Y. )  It  has  been  supposed 
that  the  measure  of  damages  in  these  cases  is  analogous  to  the 
measure  of  damages  allowed  for  infringement  of  a  patent,  but 
Judge  Sawyer  suggests  that  the  analogy  will  not  hold."  ^^ 

The  court  will  not  speculate  as  to  what  proportion  of  the 
profits  made  on  infringing  goods  would  have  been  made  if  the 
goods  had  been  sold  under  legitimate  names,  marks,  and  indicia. 
The  whole  of  the  net  profits  are  forfeited  to  complainant.  It 
would  be  most  difficult  for  the  complainant  to  give  speculative 
evidence  as  to  what  part  of  the  defendant's  profits  were  due  to 
the  unfair  conduct,  which  would  be  of  sufficient  value  to  warrant 
the  court  following  it. 

In  Saxlehner  v.  Eisner  &  Mendelson  Co.,^'^  it  was  held  that 
it  was  not  incumbent  upon  a  complainant  to  show  what  part  of 
defendant's  profits  were  due  to  the  simulation  of  label,  and  sale  of 
the  goods  which  were  to  be  accounted  for.  The  infringing  party 
"will  hardly  be  heard  to  say  that  he  would  have  been  equally 
successful  had  he  used  honest  indicia  and  labels.  It  would  be 
casting  an  intolerable  burden  upon  the  complainant  in  such  cases 
if,  after  proving  the  fraud,  the  infringement  and  the  profits,  he 
were  compelled  to  enter  the  reahns  of  speculation  and  prove  the 
precise  proportion  of  the  infringer's  gains  attributable  to  his  in- 
fringement" (p.  24). 

§  423.  Deduction  of  Defendant's  Expenses  from  Profits.  — 
There  appears  to  be  some  conflict  in  the  decisions  as  to  what 
expenses  may  properly  be  deducted  from  the  gross  profits  upon 
an  accounting  of  this  kind.  The  better  opinion  seems  to  be  that 
the  expenses  incident  to  the  selling  of  the  infringing  goods,  or  a 
fair  and  proportionate  part  of  the  general  selling  expenses  of  the 
party,  are  to  be  deducted  from  gross  profits,  but  this  rule  is 
questioned  by  Jenkins,  J.,  in  Walter  Baker  &  Co.  v.  Slack.^'^"  The 
expenses  of  salesmen,  who  sold  other  goods  than  those  com- 
plained of,  should  not  be  charged  exclusively  against  the  profits 
from  the  goods  complained  of.^^    In  the  computation  upon  an 

1"  Walter    Baker    &    Co.    v.  Slack,  ""  Walter   Baker   &   Co.    v.    Slack 

130  Fed.  514-19-20-1904  (C.  C.  A.      (supra). 
7th  Cir.).  ^^  Saxlehner  v.   Eisner   &   Mendel- 

"  138  Fed.  22-1905  (C.  C.  A.  2d  son  Co.,  138  Fed.  22-1905  (C.  C.  A. 
Cir.).  2d  Cir.). 


Deduction  of  Defendant's  Expenses  from  Profits    719 

accounting  for  the  profits  made  by  a  defendant  who  is  found  to 
have  carried  on  unfair  competition,  there  should  be  deducted 
from  the  receipts  the  cost  of  manufacture,  and  a  proportionate 
part  of  the  general  selling  expenses  of  the  business,  in  spite  of  the 
fact  that  it  does  not  appear  that  the  selHng  expenses  were  in- 
creased by  the  sale  of  the  infringing  goods.  ^^  Where  it  appears 
that  the  unlawful  business  was  carried  on  in  connection  with  de- 
fendant's regular  business  and  by  the  same  agencies,  so  as  to  in- 
volve substantially  no  additional  expense,  no  expenses  will  be 
deducted.  "The  unlawful  venture  increased  the  gross  profits 
without  swelling  the  gross  expenses.  Furthermore,  the  wrongful 
act  in  question  was  conm:iitted  knowingly,  without  a  shadow  of 
excuse"  (p.  922). 2° 

The  case  of  W.  R.  Lynn  Shoe  Co.  v.  Auburn-Lynn  Shoe  Co.,^^ 
is  authority  for  the  following  rules  as  to  computing  the  amount 
due  in  an  accounting  of  profits. 

Sales  under  a  trade  name,  condemned  as  involving  unfair 
competition,  but  not  under  unauthorized  marks,  made  to  per- 
sons who  knew  the  goods  were  made  by  defendant,  or  to  persons 
at  a  distance  who  knew  nothing  of  plaintiff,  are  not  to  be  assumed 
to  have  been  injurious  to  plaintiff. 

A  successful  plaintiff  is  entitled  to  recover  not  only  an  amount 
equivalent  to  defendant's  profits,  but  also  any  losses  resulting 
to  its  own  business  from  the  unfair  competition,  and  if  losses  can 
be  shown,  it  is  not  necessary  that  they  be  capable  of  exact  com- 
putation; if  a  reasonable  estimate  can  be  made,  that  is  enough. 
Salaries  of  persons  who  perpetrate  or  originate  the  unfair  scheme 
may  not  be  deducted. 2- 

''The  defendant  corporation  claimed  that  in  determining  its 
profits  made  in  unfair  competition  with  the  plaintiff,  there  should 
be  included  in  the  cost  of  manufacture  and  sale  the  sums  paid  as 
salaries  for  services  to  Mr.  Lynn,  its  president  and  one  of  its 
three  directors,  and  to  Mr.  Lunn,  its  treasurer  and  another  of  its 
three  directors.  These  salaries  were  fixed  by  the  board  of  direc- 
tors, Lynn  and  Lunn  being  a  majority  thereof.    The  master  de- 

'^  Cutter    V.    Gudebrod    Bros.    Co.,         ==i  100  Me.  461;  69  Atl.  569-1907. 
190  N.  Y.  252-1907;  83  N.  E.  16.  "  W.  R.  Lynn  Shoe  Co.  v.  Auburn- 

2"  Societe  Anonyme  v.  Western  Distil-      Lynn  Shoe  Co.,  103  Me.  334. 
ling  Co.,  46  Fed.  921-1891  (C.  C.  E. 
D.  Mo.). 


720  Pkofits  and  Damages 

clined  to  allow  these  salaries  in  reduction  of  profits,  and  the  de- 
fendant excepted. 

''If  the  bill  and  the  claims  made  under  the  bill  were  against 
Lynn  and  Lunn  as  a  finn  or  partnership,  it  is  clear  that  the  value 
of  their  time,  talent  and  services  expended  in  wronging  the  plain- 
tiff by  unfair  competition  should  not  be  deducted  from  the 
plaintiff's  damages.  To  do  so  would  compel  the  plaintiff  to  pay 
them  for  wronging  it.^^  But  the  counsel  for  the  defendant  corpo- 
ration claims  that  Lynn  and  Lunn  were  merely  its  servants,  that 
the  sums  paid  them  for  carrying  on  the  business  must  have  been 
paid  to  other  servants  if  not  to  them,  and  hence  were  a  neces- 
sary and  legitimate  part  of  the  cost.  Rubber  Co.  v.  Goody  ear, ^^"^ 
is  cited,  where  the  master  allowed  as  part  of  the  cost  of  the 
infringing  goods  'the  usual  salaries  of  managing  officers.'  If 
Lynn  and  Lunn  were  nothing  more  than  servants,  or  even  man- 
aging officers  of  the  corporation  acting  under  the  directors,  and 
had  no  other  connection  with  the  wrongs  done  the  plaintiff,  there 
might  be  some  force  in  the  argument.  But  the  record  before  us 
discloses  that  in  fact  the  corporation  was  practically  the  servant 
of  Lynn  and  Lunn,  not  they  its  servants.  They  organized  it, 
directed  it,  set  it  and  kept  it  in  unfair  competition  with  the  plain- 
tiff. The  wrong  to  the  plaintiff  was  conceived,  brought  forth  and 
nurtured  by  them.  Whether  they  wrought  the  wrong  as  in- 
dividuals, or  as  a  partnership,  or  as  a  corporation,  they  were  the 
real  wrongdoers.  The  court  should  penetrate  through  the  form 
to  the  substance.    The  exception  must  be  overruled.     *     *     *" 

§  424.  When  an  Account  Will  Not  be  Ordered.  —  A  decree  for 
damages  or  profits  does  not  necessarily  follow  an  injunction.  No 
accounting  will  be  ordered  when  there  is  no  theory  on  which  a 
substantial  recovery  based  on  a  rational  rule  of  damages  can 
be  had,  or  where  an  attempt  to  separate  the  defendant's  ille- 
gitimate profits  from  his  legitimate  profits  would  be  based  upon 
conjecture  and  speculation.-^  Where  damages  were  only  a  few 
dollars,  reference  to  a  master  to  fix  amount  is  properly  refused. ^^ 
Interest  is  properly  added  to  the  amount  ascertained  upon  an 

2'  CaUaghan  v.  Myers,  128  U.  S.  617.  "  Qiragosian  v.  Chutjian,  194  Mass. 

""  9  Wall.  788.  504-1907;  80  N.  E.  647;  Barnett  v. 

^*  Lvdington  Novelty  Co.  v.   Leon-  Leuchars,  34  L.  T.  (Ch.)  N.  S.  495- 

ard,  127  Fed.  155-1903  (C.  C.  A.  2d  1865. 
Cir.}. 


When  an  Account  Will  Not  be  Ordered  721 

accounting  for  profits,  from  the  time  of  the  commencement  of  the 
action.-^ 

Where  suit  is  brought  under  the  provisions  of  the  Trade-Mark 
Act,  an  accounting  of  profits  is  refused  where  the  complainant  has 
not  compUed  with  the  requirements  of  §  28  of  that  law  as  to 
marking  the  goods  "Registered  in  U.  S.  Patent  Office"  or  "Reg. 
U.  S.  Pat.  Off."  27 

It  sometimes  appears  that  the  amount  of  profits  realized  by 
the  defendant  is  insignificant,  ^^^  or  entirely  disproportionate  to 
the  expense  of  taking  an  accounting.  In  Ludington  v.  Leonard,^^'^ 
it  is  said:  "We  see  no  reason  to  differ  with  the  Circuit  Court 
in  its  refusal  to  order  an  accounting.  If  we  could  discover  any 
theory  upon  which  a  substantial  recovery  could  be  had,  we  would 
not  hesitate  to  direct  a  reference,  but  it  is  plain  that  such 
a  proceeding  will  prove  abortive  after  subjecting  both  parties 
to  large  additional  expense  and  the  defendants  to  unnecessary 
annoyance.  The  master  would  be  involved  in  an  inextricable 
tangle  from  which  it  will  be  unpossible  to  emerge  with  a  sub- 
stantial recovery  based  upon  a  rational  rule  of  damages.  *  *  * 
An  attempt  to  segregate  the  profits,  if  any,  resulting  from  the 
illegitimate  use  of  the  word,  would  require  an  excursion  into  the 
realms  of  conjecture  and  speculation,  without  hope  of  any  tangi- 
ble result." 

This  case  has  created  a  great  deal  of  discussion,  and  has  been 
cited  in  support  of  the  view  that  if  great  difficulty  appears  to  exist 
in  ascertaining  the  infrmger's  profits,  no  accounting  will  be 
ordered.  ^'^ 

28  Cutter  V.  Gudebrod  Bros.  Co.,  190  knap  Motor  Co.,  105  Fed.  63;  LiUk 

N.  Y.  252-1907;  83  N.  E.  16;  McLean  v.  Kellam,  100  Fed.  353;  Liebig's  Ex- 

V.  Fleming,  96  U.  S.  245;  24  L.  ed.  tract  v.  Walker,  115  Fed.  822."    See 

828.  also  Notaseme  Hosiery  Co.  v.  Straus, 

^■'  Rossmann  y. Gamier,  211  Fed. 4:01.  209    Fed.    495-1916;    Saxlehner    v. 

^^  Regis  v.  Jaynes,  191  Mass.  245;  Eisner,  88  Fed.  61-1898. 
77  N.  E.  774,  states:  "If  it  appears  28«  127  Fed.  155;  62  C.  C.  A.  269. 

that  the  amount  of  damages  to  the         ^^  Kessler  &  Co.  v.  Goldstrom,  177 

plaintiff,  or  of  profits  realized  by  the  Fed.  392;  Hennessey  v.  Wine  Growers' 

defendant,  is  only  insignificant,  or  that  Assn.,  212  Fed.  308.     See  Merriam  v. 

no  actual  damage  has  been  sustained,  Ogilvic,  170  Fed.  167;  Reed  v.  Frew, 

the  court  may  confine  its  relief  to  an  158  Fed.  552;  Keystone  Type  Foundry 

injunction    against    any    further    in-  v.    Portland    Pub.    Co.,    180     Fed. 

fringement.  Saxlehner  v.  Siegel-Cooper  301. 
Co.,  179  U.  S.   42;  Bradford  v.  Bel- 


722  Profits  and  Damages 

This  is  not  always  the  rule  apphed.  It  is  sometunes  held  that 
the  plaintiff  is  entitled  to  his  day  in  court,  to  a  chance  to  prove 
his  damages  and  profits  if  he  can.  In  Florence  Mfg.  Co.  v. 
Dowd,"-^"  it  was  said:  "This  is  not  a  case  where  this  court  or 
the  Circuit  Court  can  say  in  advance  that  the  complainant 
will  be  unable  to  establish  the  amount  of  the  gains  and  profits 
which  the  defendants  have  made  by  reason  of  the  unfair  methods 
employed  by  them  in  dressing  up  their  brushes  to  resemble 
the  complainant's  brushes.  *  *  *  That  the  complainant's 
task  seems  difficult,  and  the  result  an  inadequate  return  for 
time  and  labor  expended,  is  not  now  important.  The  com- 
plainant is  entitled  to  its  hearing  before  the  master;  if  it  fails  in 
its  proof  the  Circuit  Court  will  deal  with  the  situation  when  it 
enters  the  final  decree."  Merriam  v.  Saalfield,"-'^^  quoting  Florence 
Co.  V.  Dowd,  states:  ''the  usual  practice  contemplates  an  ac- 
counting, and  (that)  such  practice  should  be  followed  and  an  ac- 
counting ordered,  unless  it  is  made  clearly  and  certainly  to  appear 
that  neither  upon  the  existing  record,  nor  upon  any  record  which 
complainant  can  make  before  the  master,  could  there  be  any 
substantial  recovery."  It  dismisses  Ludington  v.  Leonard  with  the 
remark,  ''We  are  satisfied  that  such  case  presented  a  very  different 
problem  of  accounting  from  that  now  involved."  If  no  actual 
damage  has  been  sustained,  the  court  will  confine  its  relief  to  an 
injunction  against  any  further  infringement.  An  accounting  will 
not  be  ordered  where  the  infringing  party  acted  innocently  and  in 
ignorance  of  the  plaintiff's  rights,^''  provided  such  party  stops 
his  illegal  practices  after  he  discovers  the  truth. 

Where  there  has  been  a  previous  decision  between  the  parties 
which  justified  the  defendant  in  believing  that,  with  some  changes 
in  its  mark,  it  would  not  be  chargeable  with  unfair  competition, 
an  accounting  will  not  be  ordered  in  addition  to  an  in j unction. ^^ 

29°  189    Fed.    44    (C.    G.    A.   2d  trade-name,  has  been  merely  acciden- 

Cir.).  tal  or  without  any  actual  wrongful 

29^  198  Fed.  369.  attempt  to  defraud  a  plaintiff,  or  to 

^°  Regis  v.  Jaynes,  191  Mass.  245;  deceive  the  pubUc,"    See  Lrjnn  Shoe 

77  N.  E.  774,  says:  "There  is  some  Co.\.  Auhurn-LynnShoeCo.,  100  Me. 

conflict  in  the  decisions ;  but  we  think  461 ;  62  Atl.  499  (4  L.  R.  A.  N.  S.  460) ; 

that  the  weight  of  modern  authority  is  Fairbank  Co.   v.    Windsor,  124  Fed. 

in  favor  of  the  rule  that  an  account  of  200;  Notaseme  Hosiery  Co.  v.  Straus, 

profits  will  not  be  taken  where  the  209  Fed.  495. 

wrongful  use  of  a  trade-mark,  or  a  "  Fairbank    Co.    v.    Windsor,    124 


Profits  Given  to  Plaintiff  723 

But  a  defendant  will  not  be  freed  from  an  accounting,  where  he 
knows,  or  must  be  presumed  to  know,  the  probable  effect  of  his 
act  on  the  rights  of  another. 

In  Regis  v.  Jaynes,^^"  it  was  said:  "The  account  is  ordered  to 
be  taken  only  since  the  filing  of  the  original  bill,  upon  the  charge 
made  in  the  supplemental  bill.  *  *  *  Jt  cannot  be  said  that 
this  conduct  on  their  part  was  in  ignorance  of  the  plaintiff's 
rights ;  they  were  at  least  put  upon  inquiry,  and  must  be  charged 
with  knowledge  of  what  they  would  have  learned  upon  reason- 
able inquiry." 

§  425.  Profits  Given  to  Plaintiff  may  be  Limited  to  Those  Re- 
sulting from  Defendant's  Fraud.  —  Profits  may  be  refused  where 
the  infringement  or  unfair  acts  did  not  materially  influence  sales. 
In  Rushmore  v.  Badger  Brass  Mfg.  Co.,^^''  the  defendant's  lamps 
resembled  complainant's  in  general  shape  and  appearance.  The 
court  there  said: 

''The  defendant  asks  that  it  be  reheved  from  an  accounting,  or, 
at  least,  that  the  accounting  be  lunited  to  the  damages  actually 
sustained  and  proved  by  the  complainant.  We  are  inclined  to 
think  that  the  latter  request  is  reasonable  and  should  be  granted. 

"*  *  *  We  are  also  convinced  that  the  great  majority  of  the 
defendant's  lamps  were  sold  on  their  merits  and  on  the  established 
reputation  of  the  defendants,  without  any  reference  to  the  com- 
plainant's lamps.  To  award  the  entire  profits  made  on  the  sales 
of  defendant's  lamps  without  proof  of  actual  fraud  on  its  part 
would  be  inequitable.  An  accounting  covering  the  entire  field  of 
the  defendant's  sales  would  involve  both  parties  in  a  long  and 
expensive  examination  unwarranted  by  the  probable  results. 
It  seems  to  us  unfair  that  the  complainant  should  recover  profits 
on  the  sale  of  lamps  by  the  defendant  to  persons  who  never  heard 
of  Ruslmiore,  and  were  well  aware  that  the  lamps  they  bought 
were  made  by  the  defendant,  and  who  bought  them  because  they 
were  so  made.  A  decree  for  profits  and  damages  does  not  neces- 
sarily follow  a  decree  for  an  injunction.  *  *  *  \y(3  think  the 
accounting  should  be  limited  to  sales  where  it  is  shown  by  direct 
or  presmnptive  evidence  that  the  complainant  would  have  sold 
the  lamps  but  for  the  sale  by  the  defendant.  "^^'^ 

Fed.  200;   Dr.  A.  Reed  Cushion  Shoe         ^  1^98  Fed.  379.    See  note  38,  tw/^a. 

Co.  V.  Frew,  158  Fed.  552.  "'^  In  Straus  v.  Notaseme  Hosiery 

31"  191  Mass.  245.  Co.,  240  U.  S.  179,  there  was  found  to 


724  Profits  and  Damages 

§  426.  What  Profits  may  be  Recovered.  —  The  law  on  this 
jioint  is  by  no  means  settled.  Some  cases  seem  to  go  so  far  as  to 
say  that  a  knowing  infringer  is  held  to  account  for  all  profits 
accruing  from  sales  of  goods  bearing  the  infringer's  trade-mark, 
regardless  of  whether  such  trade-mark  induced  the  sale.^^  The 
latter  case  says:  ''The  general  rule  undoubtedly  is  that,  on  such 
reference,  in  a  case  of  unfair  competition,  it  is  the  duty  of  the 
master  to  fairly  take  an  account  of  profits  reahzed  by  the  defend- 
ant upon  all  articles  or  goods  manufactured  or  sold  by  him  under 
the  conditions  of  unfair  competition,  as  established  by  the  decree 
of  the  court.  Where  the  unfair  competition  consists  in  the  use  of  a 
trade-mark  in  fraud  of  the  complainant's  rights,  affixed  to  or 
covering  articles  or  packages  sold  by  the  defendant,  complainant 
is  entitled,  by  way  of  damages  and  compensation  for  the  wrong 
inflicted  upon  him,  to  the  whole  profits  reahzed  by  the  defendant 
from  the  sale  of  articles  under  color  of  the  infringing  trade-mark. 
As  it  is  generally  impossible  to  discruninate  between  sales  made 
by  reason  of  the  deception  worked  by  the  infringing  trade-mark, 
and  of  those  not  so  made,  courts  have  required  that  the  whole 
profits  should  go  to  the  complainant.  The  infringer  in  such  cases 
has  no  gromid  to  complain  that  he  is  thus  suffering  the  conse- 
quences of  his  own  wrong." 

The  English  rule  is  the  same.^^  In  Edelsten  v.  Edelsten  it  is 
said:  "At  law  the  proper  remedy  is  by  an  action  on  the  case 
for  deceit,  and  proof  of  fraud  on  the  part  of  the  defendant  is 
of  the  essence  of  the  action;  but  this  court  will  act  on  the  principle 

be  unfair  competition  in  the  use  of  a  erly  were  enjoined  from  further  use  of 

label.    The  trade  name  of  the  goods,  the  mark  in  controversy,  but,  so  far 

however,  was    distinctive    and    there  as    the    decree    charged    them    with 

were  other  indications  that  purchasers  profits,  it  is  reversed." 

had   been   led   to   select   defendant's  So  in  Rubber  &  C.  H.  T.  Co.  v.  F.  W. 

goods  by  other  considerations  than  by  Devoe,  etc.,  Co.,  233  Fed.  150,  the  unfair 

the  use  of  a  label  resembhng  plaintiff's,  competition  was  not  found  to  be  "  wil- 

The  Court  said:   "Taking  all  these  ful  and   fraudulent"  so  as  to  justify 

considerations  into  account,  coupled  the  imposition  of  profits,  though  dam- 

with  the  absence  of  evidence  that  any  ages  were  allowed, 

deceit    or    substitution    was    accom-  ^^  Rowley  Co.  v.  Rowley,  193  Fed. 

plished  in  fact,  we  find  it  impossible  to  390  (C.  C.  A.) 

beUeve  that  any  considerable  part  of  "  See   Edelsten  v.   Edelsten,   1    De 

the  petitioner's  business  was  due  to  Gex,    J.    &    S.     185,    and    Lever   v. 

their  goods  being  supposed  to  be  the  Goodwin   (1887),    4    Rep.    Pat.    Cas. 

plaintiff's  hose.    The  petitioners  prop-  492. 


What  Profits  may  be  Recovered  725 

of  protecting  property  alone,  and  it  is  not  necessary  for  the 
injunction  to  prove  fraud  in  the  defendant,  or  that  the  credit  of 
the  plaintiff  is  injured  by  the  sale  of  an  inferior  article.  The 
injury  done  to  the  plaintiff  in  his  trade  by  loss  of  custom  is  suffi- 
cient to  support  his  title  to  relief;  neither  will  the  plaintiff  be  de- 
prived of  remedy  in  equity,  even  if  it  be  shown  by  the  defendant 
that  all  the  persons  who  bought  from  hun  goods  bearing  the 
plaintiff's  trade-mark  are  well  aware  that  they  were  not  of  the 
plaintiff's  manufacture.  If  the  goods  were  so  supplied  by  the  de- 
fendant for  the  purpose  of  being  sold  again  in  the  market,  the 
injury  to  the  plaintiff  is  sufficient."  ^'^ 

Whether  or  not  the  plaintiff  would  have  made  the  profits,  had 
the  defendant's  acts  not  been  committed,  has  nothmg  to  do  with 
the  rights  of  the  plaintiff.       \ 

In  Atlantic  Milling  Co.  v.  Rowland,^*''  this  rule  is  stated:  "It  is 
argued  that  the  evidence  does  not  show  that  the  orator  would  have 
made  this  profit  if  the  defendant  had  not.  This  might  be  true, 
and  not  affect  the  rights  of  the  parties.  If  the  defendants  made 
profits  by  their  invasion  of  the  orator's  rights,  the  orator  is  entitled 
to  them  whether  the  same  profits  would  have  been  made  by  the 
orator  or  not,  and  not  to  any  more  if  they  would,  for  the  same 
profits  could  not  be  made  by  both."  ^^ 

A  recent  case  qualifies  this  doctrine  by  holding  that  the  sale 
of  the  article  bearing  an  infringer's  trade-mark  simply  creates  a 
presumption  that  the  sale  thereof  was  effectuated  by  this  false 
marking,  or  unfair  competition,  which  may  be  rebutted  by  the 
defendant. 

''Not  only  does  this  result  follow  from  adopting  the  analogy  of 
the  patent  law,  but  we  take  this  to  be  the  rule  also  of  the  trade- 
mark cases;  and  when  some  of  them  declare  that  the  defendant 
must  respond  for  his  profits  on  every  article  which  bore  the  trade- 
mark stamp  upon  it,  they  intend  to  go  no  further  than  to  say  that 

3^  Edelsten  v.  Edelsten,  1  De  Gex  J.  514  (65  C.  C.  A.  138) ;  Atlantic  Milling 

&  S.,  Ch.  185.    To  the  same  effect  are  Co.  v.  Rowland,  27  Fed.  24;  Saxlehner 

Coats    V.    Holhrook,    2    Sandf.    Ch.  v.  Eimer,  138  Fed.  22;  Fairhank  Co.  v. 

586;  Spottiswoode  v.  Clark,  10  London  Windsor,  118  Fed.  96;  Graham  v.  Plate, 

Jurist,   1043;  2  Sandf.  Ch.   R.   628;  40  Cal.  593  (6  Am.  Rep.  639). 

Reading  Stove  Works  v.  Howes  Co.,  201  5"''  27  Fed.  24. 

Mass.  437;  87  N.  E.  751;  Regis   v.  ^s  Quoted  in  Fairhank  v.  Windsor, 

Jaynes,  191  Mass.  245;  77  N.  E.  774;  118  Fed.  96;  Regis  v.  Jaynes,  191  Mass. 

Walter  Baker  &  Co.  v.  Slack,  130  Fed.  245;  77  N.  E.  774. 


726 


Profits  and  Damages 


such  marking  raises  a  presumption  that  the  sale  thereof  was 
effectuated  by  this  false  marking,  or  unfair  competition.  They 
are  not  inconsistent  with  the  disputable  character  of  this  pre- 
smnption.  In  many  cases,  probably  in  the  typical  case,  it  would 
be  practically  impossible  to  dispute  the  presumption,  because, 
even  if  it  appeared  that  the  first  purchaser,  hke  the  wholesaler  or 
dealer,  knew  what  he  was  buying,  this  would  not  of  itself  affect 
the  presumption  of  a  fraud  upon  the  ultimate  consumer  or  user; 
but,  even  in  the  case  of  a  technical  trade-mark,  if  every  pur- 
chaser, immediate  and  ultimate,  knew  that  he  was  getting  the 
counterfeit  and  not  the  genuine,  and  bought  it  because  he  pre- 
ferred the  counterfeit  to  the  genuine,  there  would  be  no  liabihty 
for  profits."  ^^ 

The  weight  of  authority  undoubtedly  is  that  where  a  fraudulent 
intent  is  shown,  either  in  trade-mark  or  unfair  competition  cases, 
and  it  is  impossible  to  determine  what  portion  of  the  sales  were 
due  to  the  infringing  trade-mark  or  unfair  competition,  the  plain- 
tiff should  recover  the  defendant's  entire  profits  on  each  sale  of 
goods  bearing  such  trade-mark. ^^ 


3«  Merriam  v.  Saalfield,  198  Fed.  369. 

"  Wolf  Bros.  &  Co.  V.  Hamilton- 
Brown  Shoe  Co.,  206  Fed.  611;  Mer- 
riam V.  Saalfield,  198  Fed.  369.  This 
rule  is  stated  in  Wolf  Bros.  &  Co.  v. 
Hamilton,  etc.  (above)  to  be  in  analogy 
to  the  patent  cases,  which  are  re- 
viewed in  Westinghouse  v.  Wagner,  225 
U.  S.  604.  That  last  case  holds  at 
page  618,  "Having,  by  books  and 
other  data,  proved  to  the  satisfac- 
tion of  the  Master  the  existence 
of  profits,  the  plaintiff  had  carried 
the  burden  imposed  by  law,  and 
established  every  element  necessary 
to  entitle  it  to  a  decree,  except  one. 
As  to  that,  the  act  of  the  defend- 
ant had  made  it  not  merely  difficult, 
but  impossible  to  carry  the  burden  of 
apportionment.  But  plaintiff  offered 
evidence  tending  to  estal^lish  a  legal 
equivalent.  *  *  *  The  plaintiff 
had  now  presented  proof  to  demon- 
strate its  right  to  the  whole  of  the 


fund  because  of  the  fact  that  the  de- 
fendant had  inextricably  commingled 
and  confused  the  parts  composing 
it.  *  *  *  One  party  or  the  other 
must  suffer.  The  inseparable  profit 
must  be  given  to  the  patentee  or 
infringer.  The  loss  had  to  fall  on  the 
innocent  or  guilty.  In  such  an  alter- 
native the  law  places  the  loss  on  the 
wrongdoer."  Quoting  Callaghan  v. 
Myers,  128  U.  S.  617.  In  the  case 
of  Saxlehner  v.  Eisner  &  Mendel- 
sohn Co.,  138  Fed.  22,  which  was 
the  final  link  in  a  long  chain  of  cases 
between  these  two  parties,  the  court 
said:  "The  evident  intent  and  pur- 
pose of  the  defendant  was  to  poach 
on  the  reputation  established  by  the 
Hunyadi  Janos  water.  It  started  out 
to  get  a  part  of  the  complainant's 
profits,  and  it  succeeded,  but  we  are 
familiar  with  no  principle  of  law  which 
will  i^ermit  it  to  keep  these  prof- 
its.    *    *    *    It  would  be  casting  an 


What  Profits  may  be  Recovered  727 

Where  the  profits  to  the  infringing  party  are  largely  due  to  the 
merits  of  the  article  sold,  and  not  to  the  merit  of  the  original 
article  or  trade-mark,  and  the  evidence  shows  that  purchasers 
knew  that  the  defendant  was  the  maker  and  had  never  heard  of 
plaintiffs,  the  complainant  can  only  recover  the  profits  from  such 
sales  as  he  can  show,  on  direct  and  presumptive  evidence,  he 
would  have  made  but  for  the  defendant's  unfair  competition.^^ 

The  plaintiff  is  not  required  to  prove  the  damage  which  he 
sustained  with  mathematical  accuracy.  It  is  enough  if  he  fur- 
nishes evidence  upon  which  the  tribunal  can  make  a  reasonably 
probable  estimate  through  the  exercise  of  intelligent  judgment. 

"It  is  not  necessary,  however,  for  the  plaintiff  in  such  case  to 
prove  the  resulting  damages  in  separation  from  other  damages 
with  mathematical  certainty  or  anything  hke  it.  He  is  not  to  be 
held  to  precision,  to  the  exact  pound,  neither  more  nor  less,  nor 
even  to  show  a  distinct  separation  in  time  and  circumstance.  It  is 
enough  if  he  furnishes  evidence  upon  which  the  tribunal  can  make 
a  reasonably  probable  estimate  through  the  exercise  of  intelligent 
judgment.  Mere  difficulty  in  making  such  an  estimate  does  not 
authorize  the  tribunal  to  turn  the  plaintiff  away  without  any 
damages.  Of  course,  in  a  given  case  the  estimate  may  be  too 
large  or  too  small,  as  it  may  be  and  undoubtedly  often  is  in  that 
large  class  of  cases  in  which  damages  cannot  be  calculated  but 

intolerable  burden  on  the  complain-  tirely  apart  from  the  question  of  actual 

ant  in  such  cases,  if,  after  proving  damage,  the  owner  of  a  trade-mark  is 

the  fraud,  the  infringement  and  the  entitled  to  recover  from  an  infringer  the 

profits,  he  were  compelled   to   enter  profits  realized  by  the  latter,  from  sales 

the  realms  of  speculation  and  prove  the  under  the  simulated  trade-mark  {Gra- 

precise  proportion  of  the  infringer's  /mm  v.  P^ate,  40  Calif.  593;  6  Am.  Rep. 

gains    attributable    to    his    infringe-  639).    The  same  rule  applies  to  cases 

ment."  of  unfair  competition  in  which,  while 

Regis  v.  Jaynes  et  al.,  191  Mass.  245;  there  is  no  violation  of  an  exclusive 

Forster  Mfg.  Co.  v.  Cutter-Tower  Co.,  right  in  a  technical  trade-mark,  the 

215  Mass.  136;  101  N.  E.  1083;  Nota-  defendant  has  used  devices  calculated 

seme  Hosiery  Co.  v.  Straus,  209  Fed.  to  pass  off  his  goods  as  those  of  the 

495;  Lynn  Shoe  Co.  v.  Auburn-Lynn  plaintiff." 

Shoe  Co.,  100  Me.  461 ;  Worcester  Brew-         ^s  Rushmore  v.  Badger,  198  Fed.  379 

ingCorp.y.Rueter,157  Fed.  217  •,Si7iger  (C.  C.  A.  2d  Cir.);  Ford  v.  Foster, 

Mfg.  Co.  v.  June  Mfg.  Co.,  163  U.  S.  L.    R.   7   Ch.   App.   611-1872.      See 

169;  Modesto  Creamery  v.  Stanislaus  also  Notaseme  Co.  v.  Straus,  209  Fed. 

Creamery  Co.,  168  Calif.  289-1914;  142  495. 
Pac.  845.    This  last  case  states:  "En- 


728 


Profits  and  Damages 


necessarily  have  to  be  estimated.  Certainly,  precision  is  un- 
doubtedly very  desirable  in  the  assessment  of  damages  in  such 
cases,  but  it  is  practically  unattainable,  and  there  is  less  danger  of 
injustice  m  awarding  judgment  upon  reasonably  intelUgent  esti- 
mates than  in  refusing  it  wholly."  ^^  And  the  fact  that  making  of 
such  an  estimate  is  very  difficult  is  no  ground  for  refusal  to  allow 
damages.'"' 

What  is  above  stated  as  the  prevailing  rule  has  now  received 
the  approval  of  the  U.  S.  Supreme  Court.""" 


39  W.  R.  Lynn  Shoe  Co.  v.  Auhurn- 
Lynn  Shoe  Co.,  103  Maine,  334;  C9 
Atl.  569.  See  Allison  v.  Chandler,  11 
Mich.  542,  at  p.  554;  Hennessey  v.  Wil- 
merding-Loewe  Co.,  103  Fed.  90. 

*"  W.  R.  Lynn  Shoe  Co.  v.  Auburn- 
Lynn  Shoe  Co.  (supra). 

*'^  Hamilton-Brovm  Shoe  Co.  v.  Wolf 
Bros.  &  Co.,  240  U.  S.  251,  in  which 
defendant  contended  that  in  analogy 
to  a  rule  adopted  in  a  line  of  patent 
cases,  "the  profits  recoverable  should 
be  limited  to  such  amount  as  may  be 
shown  by  direct  and  positive  evidence 
to  be  the  increment  to  defendant's  in- 
come by  reason  of  the  infringement, 
and  that  the  burden  of  proof  is  upon 
complainant  to  show  what  part  of  de- 
fendants profits  were  attributable  to 
the  use  of  the  infringing  mark." 

The  Court,  however,  said,  by 
Pitney,  J.:  "The  rule  invoked  is  that 
which,  as  pointed  out  in  the  last  two 
of  these  cases,  is  applicable  where 
plaintiff's  patent  relates  to  a  part  only 
of  a  machine  or  combination  or  proc- 
ess, or  to  particular  improvements  in 
a  machine  or  other  device.  In  such 
case,  where  the  invention  is  used  in 
combination  with  other  elements  of 
value  not  covered  by  the  patent,  so 
that  plaintiff's  patent  creates  only  a 
part  of  the  profits,  he  is  entitled  to 
recover  only  that  part,  and  must  give 
evidence  tending  to  apportion  thG 
profits  between  the  patented  and  un- 


patented features.  But,  as  pointed 
out  in  the  Westinghouse  Case  (p.  618), 
there  is  a  recognized  exception  where 
the  plaintiff  carries  the  burden  of  proof 
to  the  extent  of  showing  the  entire 
profits,  but  is  unable  to  apportion 
them,  either  because  of  the  action  of 
the  wrongdoer  in  confusing  his  own 
gains  with  those  which  belong  to 
plaintiff,  or  because  of  the  inherent 
impossibiUty  of  making  an  approxi- 
mate apportionment.  There,  'on 
established  principles  of  equity,  and 
on  the  plainest  principles  of  justice, 
the  guilty  trustee  cannot  take  ad- 
vantage of  his  own  wrong.' 

"  Assuming  the  asserted  analogy  to 
patent  cases  to  exist,  a  sufficient  rea- 
son for  not  requiring  complainant  in 
the  present  case  to  make  an  apportion- 
ment between  the  profits  attributable 
to  defendant's  use  of  the  offending 
mark  and  those  attributable  to  the  in- 
trinsic merit  of  defendant's  shoes  is 
that  such  an  apportionment  is  in- 
herently impossible.  Certainly,  no 
formula  is  suggested  by  which  it  could 
be  accomphshed.  The  result  of  ac- 
ceding to  defendant's  contention, 
therefore,  would  l)e  to  deny  all  com- 
pensation to  complainant.  And  it  is 
to  be  remembered  that  defendant  does 
not  stand  as  an  innocent  infringer. 
Not  only  do  the  findings  of  the  court 
of  appeals,  supported  by  abundant 
evidence,  show  that  the  imitation  of 


Determining  What  Are  and  Are  Not  Profits     729 

§  427.  Rules  for  Determining  V/hat  Are  and  Are  Not  Profits.  — 
When  an  accounting  has  been  decreed  it  is  often  a  difficult  mat- 
ter to  determine  just  what  portion  of  the  sums  received  by  the 
defendant  for  its  goods,  are  profits.  This  is  particularly  true 
where  the  manufacture  and  sale  of  the  infringing  article,  is  only  a 
part  of  the  defendant's  business.  The  rule  of  the  United  States 
Supreme  Court,  in  patent  cases,  is  that  a  ratable  proportion  of  the 
general  expense  in  carrying  on  the  business  should  be  deducted 
from  the  profits  made  by  the  use  of  the  patented  device.  See 
Tremolo  Patent,'^^^  {Tremaine  v.  Hitchcock  &  Co.,)  where 
it  is  said:  ''We  cannot  see  why  the  general  expenses  incurred 
by  the  defendants  in  carrying  on  their  business,  such  expenses 
as  store  rent,  clerk  hire,  fuel,  gas,  porterage,  etc.,  do  not 
concern  one  part  of  their  business  as  much  as  another.  It  may 
be  said  that  the  selling  a  tremolo  attachment  did  not  add  to 
their  expenses,  and  therefore,  that  no  part  of  those  expenses  should 
be  deducted  from  the  price  obtained  for  such  an  attachment. 
This  is,  however,  but  a  partial  view.  The  store  rent,  the  clerk  hire, 
etc.,  may,  it  is  true,  have  been  the  same  if  that  single  attachment 
had  never  been  bought  or  sold,  so  it  is  true  that  the  general  ex- 
penses of  their  business  would  have  been  the  same,  if  instead  of 
buying  and  selling  one  hundred  organs,  they  had  bought  and  sold 
only  ninety-nine.  But  will  it  be  contended  that  because  buying  and 
selling  an  additional  organ  involved  no  increase  of  the  general  ex- 
penses, the  price  obtained  for  that  organ  above  the  price  paid  was 
all  profit?  Can  any  part  of  the  whole  number  sold  be  singled  out 
as  justly  chargeable  with  all  the  expenses  of  the  business?  As- 
suredly, no."  This  rule  has  been  applied  to  trade-mark  and  un- 
fair competition  cases  by  some  courts.'*^ 

Several  well-considered  cases  have  attempted  to  substitute 
another  rule:  that  the  defendant  must  prove  the  amount  of  any 
expense  which  would  not  have  been  incurred,  but  for  the  manu- 
facture and  sale  of  the  infringing  article,  and  in  default  of  such 

complainant's  mark  was  fraudulent,  *°^  23  Wall.  518. 

but  the  profits  included  in  the  decree  "  Walter  Baker  v.  Slack,  130  Fed. 

are  confined  to  such  as  accrued  to  de-  514;  Cutter  v.  Gudebrod  Bros.  Co.,  190 

fendant  through  its  persistence  in  the  N.  Y.  252;  C.  A.  Briggs  Co.  v.  Nat'l 

unlawful  simulation  in  the  face  of  the  Wafer  Co.,  215  Mass.,  100;  102  N.  E. 

very    plain    notice    of    complainant's  87. 

rights  that  is  contained  in  its  bill." 


730 


Profits  and  Damages 


proof  the  gross  profits  from  all  sales  of  such  article  will  be  allowed 
the  plaintiff.  '2 

But  a  late  case  dealing  with  the  question  states  that  the  rule  of 
the  patent  law  controls,  and  is  to  be  applied  "where  special  cir- 
cumstances do  not  make  its  application  unjust."  *^ 


*2  In  Societc  Anonyme  v.  Western 
Distilling  Co.,  46  Fed.  921,  Hazel,  J.: 
"  When  an  unlawful  business  is  carried 
on  in  connection  with  the  defendant's 
regular  business,  and  the  same  agen- 
cies are  employed  in  doing  that  which 
is  lawful,  and  that  which  is  unlawful, 
no  rule  of  law  of  which  I  am  aware  re- 
quires any  deduction  for  expenses  in 
estimating  the  profits  of  the  unlawful 
business.  In  this  case  the  defendant 
was  a  distilling  company.  It  has  a 
place  of  business,  a  license  for  doing 
business,  traveling  salesman,  etc. 
The  proof  does  not  convince  me  that 
any  additional  expenses  were  incurred 
by  the  defendant  in  the  manufacture 
and  sale  of  Benedictine,  other  than 
such  as  the  master  has  allowed.  The 
manufacture  of  Benedictine  was  car- 
ried on  in  connection  with  its  ordinary 
business  by  the  usual  number  of  em- 
ployees. The  unlawful  venture  in- 
creased the  gross  profits  without 
swelling  the  gross  expenses."  Quoted 
with  approval  in  N.  K.  Fairbank  v. 
Windsor,  118  Fed.  96.  See  above, 
Saxlehner  v.  Eisner  &  Mendelsohn  Co., 
138  Fed.  22,  and  Regis  v.  Jaynes,  191 
Mass.  245.  In  that  case  it  was  said: 
"The  defendants  in  the  case  at  bar 
appear  to  have  been  carrj'ing  on  a 
large  business,  and  they  did  not  offer 
to  show  that  their  general  expenses 
have  been  at  all  increased  by  their 
taking  up  the  sale  of  '  Rexall '  goods. 
*  *  *  To  allow  them  to  charge 
upon  the  gross  profits  from  these  goods 
any  portion  of  the  general  expenses 
jjhich    were    not    increased    thereby 


would  be  to  allow  them  to  derive  a  di- 
rect advantage  from  their  wrong. 
They  were  not  precluded  from  proving 
and  having  allowed  to  them  the 
amount  of  any  expenses  which  were 
properly  chargeable  to  these  goods." 
Followed  by  Nelson  v.  Winchell,  203 
Mass.  75;  89  N.  E.  180;  23  L.  R.  A. 
(N.  S.)  1150. 

"  C.  A.  Briggs  v.  Nat'l  Wafer  Co., 
215  Mass.  100;  102  N.  E.  87,  where  it 
is  said:  "It  appears  from  the  master's 
report  that  the  defendant  has  made 
substantial  profits  from  its  sale  of 
goods  bearing  the  plaintiff's  label  or  an 
imitation  thereof,  unless  a  deduction 
is  made  of  a  part  of  its  general  ex- 
penses to  be  determined  by  appor- 
tioning them  in  the  ratio  which  its 
sales  of  Boston  Wafers  bear  to  its  total 
sales.  If  such  a  deduction  is  made,  the 
defendant  has  obtained  no  profits  from 
the  sales  in  question. 

"It  has  been  held  by  the  Supreme 
Court  of  the  United  States  that  such  a 
deduction  should  be  made  in  ascer- 
taining the  profits  realized  by  the  in- 
fringer of  a  patent.  The  Tremolo 
Patent,  23  Wall.  518,  23  L.  ed.  97. 
The  same  rule  has  been  followed  since 
that  decision  in  trade-mark  cases  and 
cases  of  unfair  competition,  some  of 
which  are  collected  in  Regis  v.  Jaynes 
&  Co.,  191  Mass.  245;  77  N.  E.  774. 
In  the  last  named  case  this  court  de- 
clined to  follow  the  rule  of  the  Tremolo 
Patent,  tibi  svpra,  deeming  it  inappli- 
cable to  the  facts  before  the  court.  In 
the  Regis  case,  the  defendants  were 
carrying  on  a  large  business,  of  which 


Expenses  Deducted  in  Ascertaining  Profits       731 

When  the  entire  business  of  the  defendant  is  the  manufac- 
ture and  sale  of  the  article  which  invades  the  plaintiff's  rights, 
the  former  may  deduct  from  the  gross  profits  its  legitimate 


their  dealings  in  goods  bearing  the 
plaintiff's  trade-mark  constituted  only 
a    small    part,    and    the    defendant's 
general  expenses  did  not  appear  to 
have  been  at  all  increased  by  those 
dealings.    Here  the  defendant's  deal- 
ings in  Boston  Wafers  have  been  a  sub- 
stantial and  integral  part  of  its  entire 
wafer  and  lozenge  business,  averaging 
about  ten  per  cent,  thereof;  and  its 
general    expenses    were    incurred    for 
this  department  and  its  increase  and 
extension  just  as  for  any  part  of  its 
business.     The   defendant   has   used 
considerable  and  cumulative  effort  to 
push  and  increase  these  sales,   very 
probably  more  than  it  has  applied  to 
other   parts   of   its   business.     While 
there  is  no  direct  evidence  on  the  sub- 
ject, it  seems  manifest  to  us,  looking  at 
the  master's  report,  that  the  defend- 
ant's general  expenses  have  been  at 
least  proportionately  increased  by  this 
department.    The  rule  adopted  in  the 
Tremolo    Patent    {uhi    supra)    is    the 
general  rule,  to  be  applied  where  spe- 
cial circumstances  do  not  make  its 
application  unjust."     See  also  Baker 
V.  Slack,  130  Fed.  514  (C.  C.  A.  7th 
Cir.)-1904;  Regis  v.  Jaynes  &  Co.,  191 
Mass.  245-1906.     After  the  decision 
of  this  case  in  185  Mass.  458,  the  de- 
fendant was  enjoined  from  using  the 
word  Rex  or  Rexall  in  connection  with 
the  sale  of  a  dyspepsia  cure,  and  it  was 
decreed   that   upon   filing   a   supple- 
mental bill  the  case  should  go  to  a 
master  for  an  accounting  of  profits. 
This  supplemental  bill  was  filed,  and 
alleged  that  since  the  filing  of  the 
original  bill  the  defendants  have  sold 


many  boxes  of  tablets  under  the  name 
"Rexall,"  and  as  "Rexall  Dj^spepsia 
Tablets,"  and  prays  for  an  account- 
ing of  damages  and  profits.     Opinion 
by  Sheldon,  J.,  who  held  at  p.  251:  (a) 
"It  seems  to  us  that  where,  as  here,  a 
small   article   is   sold   with   unlawful 
imitation  of  a  trade-mark  it  is  rather 
to  be  treated  as  an  undivided  whole, 
and  that  as  against  the  wrongdoer  it 
must  be  taken  to  be  a  sale  brought 
about  by  means  of  the  unlawful  trade- 
mark.    The    decisions    cited    in    the 
former  part  of  this  opinion  go  to  the 
full  length  here  stated.    If  any  analogy 
from  patent  cases  is  to  be  adopted  we 
ought  rather  to  follow  the  rule  that 
where  the  infringing   device   derives 
its  entire  commercial  value  from  the 
patented     feature     or     improvement 
then  the  patentee  is  entitled  to  the 
entire  profits  realized  from  its  sale." 
(b)  p.  252 :  The  defendants  in  this  case 
appear  to  have  been  carrying  on  a 
large  business,  and  they  did  not  offer 
to  show  that  their  general  expenses 
have  been  at  all  increased  by  their 
taking  up  the  sale  of  Rexall  goods. 
Since    the    filing    of    the    plaintiff's 
bill    *    *    *     their     sale     of     these 
goods  has  been  unlawful.     To  allow 
them  to  charge  upon  the  gross  profits 
from  these  goods  any  portion  of  the 
general  expenses  which  will  not  in- 
crease  thereby   would   be   to   enable 
them  to  derive  a  direct  advantage 
from    their    wrong.     *    *     *    Under 
the  circumstances  here  existing,  we  do 
not  think  that  the  rule  in  the  case  of 
the    Tremolo    Patent,   supra,    should 
apply." 


'32 


Profits  and  Damages 


expenses,''''  the  wages  or  salaries  of  its  employees/''  and  losses 
actually  sustained  because  of  bad  debts,  or  otherwise.'"^ 

§  428.  When  Laches  Will  Bar  an  Accounting.  —  Cases  fre- 
quently arise  where  a  court  of  equity  will  grant  an  injunction 
against  future  infringement  of  trade-mark  or  unfair  competition, 
but  refuse  to  allow  an  accounting  or  a  decree  for  damages,  be- 
cause of  laches  on  the  part  of  the  complainant  in  seeking  redress/^ 

The  length  of  time  which  will  constitute  such  laches  as  to  forfeit 


"  In  Walter  Baker  &  Co.  v.  Slack, 
130  Fed.  514.  "It  does  not  seem  quite 
just  that  the  wrongdoer  should  be 
permitted  to  escape  without  pecuniary- 
loss  to  himself,  and  yet  we  must  re- 
member that  here  the  appellant  has 
chosen  to  prove,  as  the  basis  of  recov- 
ery, merely  the  profits  which  the 
wrongdoer  has  made,  and  in  estimat- 
ing those  profits  we  feel  concluded  by 
the  ruhng  of  the  ultimate  tribunal 
(The  Tremolo  Patent,  23  Wall.  518, 
23  L.  ed.  97)  that,  to  ascertain  the  net 
profits  accruing  to  the  wrongdoer,  as 
in  ascertaining  profits  in  any  other 
case,  the  expense  of  making  the  sale 
should  be  deducted  from  the  gross 
proceeds  of  the  sale  upon  the  same 
principle  that  the  cost  of  the  spurious 
article  is  deducted  from  the  gross 
receipts  of  its  sale."  Nelson  v.  J. 
M.  Winchell  &  Co.  203  Mass.  75;  89 
N.  E.  180.  (Holding  that  a  cost  sheet 
of  defendants  may  be  used  by  a  mas- 
ter, as  evidence  of  the  cost  of  shoes 
manufactured  by  them,  in  absence  of 
expHcit  evidence  to  the  contrary.) 
Regis  v.  Jaynes,  191  Mass.  245;  77 
N.  E.  774;  W.  R.  Lynn  Shoe  Co.  v. 
Attburn-Lynn  Shoe  Co.,  103  Maine, 
334;  69  Atl.  569. 

«  Coca  Cola  Co.  v.  Nashmlle  Syrup 
Co.,  215  Fed.  527,  in  which  the  salary 
of  the  general  manager  and  organizer 
of  a  corporation  was  allowed  as  a  dis- 
bursement, the  general  manager  being 


a  minority  stockholder,  and  no  claim 
being  made  by  the  complainant  that 
the  corporation  was  a  mere  sham  or 
subterfuge.  Rubber  Co.  v.  Goodyear,  9 
Wall.  (U.  S.)  788;  19  L.  ed.  566;  W. 
R.  Lijnn  Shoe  Co.  v.  Auburn  Lynn 
Shoe  Co.,  103  Maine  334;  69  Atl. 
569;  Regis  v.  Jaynes,  191  Mass.  245. 

*^  W.  R.  Lynn  Shoe  Co.  v.  Auburn 
Lynn  Shoe  Co.,  103  Maine,  334;  69 
Atl.  569;  Edelsten  v.  Edelsten,  1  De  Gex 
J.  &  S.  185,  10  L.  T.  (N.  S.)  780;  Nelson 
V.  Winchell  &  Co.,  203  Mass.  75;  89 
N.  E.  180;  23  L.  R.  A.  N.  S.  1150. 

»Menendez  v.  Holt,  128  U.  S.  514; 
McLean  v.  Fleming,  96  U.  S.  245; 
Edelsten  v.  Edelsten,  1  De  Gex,  J.  &  S. 
185;  MiUington  v.  Fox,  3  My.  &  Cr. 
338;  Harrison  v.  Taijlor,  11  Jur.  N.  S. 
408;  Cahn  v.  Gottschalk,  14  Daly 
(N.  Y.),  542;  Fairbanks  v.  Luckel,  106 
Fed.  498;  Jenkins  Bros.  v.  Kelly  & 
Jones  Co.,  212  Fed.  328;  S.  Howes 
Co.  V.  Howes  Grain  Cleaner  Co., 
24  Misc.  (N.  Y.)  83-1898;  52  N.  Y. 
Supp.  468. 

McLean  v.  Fleming  (supra)  states, 
p.  257:  "Cases  frequently  arise  where  a 
court  of  equity  will  refuse  the  prayer 
of  the  complainant  for  an  account  of 
gains  and  profits,  on  the  ground  of 
delay  in  asserting  his  rights,  even 
when  the  facts  proved  render  it 
proper  to  grant  an  injunction  to  pre- 
vent future  infringement." 


Notice  of  Infringement 


733 


an  accounting,  differs  according  to  the  cii'cumstances  of  each  case. 
Much  depends  on  the  extent  of  the  knowledge  of  the  complainant, 
and  whether  the  intent  of  the  infringer  is  fraudulent  or  not,  and 
the  courts  decide  each  case  according  to  the  facts/^ 

An  unreasonable  delay  constitutes  passive  acquiescence,  which, 
although  it  gives  the  defendant  no  new  right,  does  protect  him 
from  the  loss  of  his  profits  during  the  tune  of  the  complainant's 
procrastination  in  seeking  redress/^ 

§  429.  Notice  of  Infringement.  —  The  complainant  is  entitled 
to  a  reasonable  time  after  first  learning  of  the  infringement 


i»Menendez  v.  Holt,  128  U.  S.  514; 
9  Sup.  Ct.  143;  32  L.  cd.  526;  Fair- 
bank  V.  Luckcl,  106  Fed.  498;  McLean 
V.  Fleming,  96  U.  S.  245.  See  also 
leading  English  case,  Harrison  v. 
Taylor,  11  Jur.  N.  S.  408,  where  a  delay 
of  nine  months  was  held  to  bar  a  right 
to  recovery  of  profits. 

In  Low  V.  Fels,  35  Fed.  361,  four 
years  was  held  to  bar  recovery  of 
profits,  and  in  Worcester  Brewing  Co. 
V.  Rueter  &  Co.,  157  Fed.  217,  fifteen 
months  was  held  an  unreasonable  de- 
lay in  warning  defendant  of  com- 
plainant's intention  to  bring  suit, 
when  the  defendant  acted  in  good 
faith.  In  Fairbank  Co.  v.  Luckel  Co., 
106  Fed.  498  (aff.  116  Fed.  332),  it  is 
said:  "The  length  of  time  of  such 
laches  which  shall  be  deemed  to  be  an 
assent  to  the  use  of  the  trade-mark 
may  differ  according  to  the  circum- 
stances of  different  cases.  Much  will 
necessarily  depend  upon  the  extent 
of  the  knowledge  which  the  com- 
plainant possessed  of  the  invasion 
of  his  rights  and  upon  the  intention  of 
the  infringer,  whether  fraudulent  or 
not." 

In  Saxlchner  v.  Eisner  &  Mendelsohn 
Co.,  179  U.  S.  19,  the  complainant 
knew  of  defendant's  infringement  for 
ten  years.  It  was  held,  that  owing  to 
the    unsuccessful    attempts    of    com- 


plainant to  protect  his  trade-mark  in 
Hungary,  his  native  country,  he  was 
justified  in  not  suing  here,  and  as  he 
brought  suit  promptly  when  he  was 
finally  successful  in  Hungary,  his 
conduct  was  not  such  laches  as  would 
defeat  a  recovery  of  the  defendant's 
profits,  the  latter  having  acted  fraud- 
ulently. It  was  said:  "It  can  scarcely 
be  wondered  at  that,  in  view  of  the 
disabilities  under  which  he  labored  in 
his  own  country,  Saxlehner  should 
have  thought  it  futile  to  undertake 
the  prosecution  of  his  rights  in  a  dis- 
tant land.  As  the  defendant  is  unable 
to  call  to  his  assistance  any  authority 
from  the  home  government  for  the 
use  of  these  simulated  labels,  and  as 
they  and  their  vendors  in  Hungary 
seized  upon  these  labels  with  knowl- 
ledge  of  Saxlehner's  rights,  it  is  no 
hardship  to  enjoin  their  further  use, 
and  to  hold  defendant  liable  for  such 
profits  as  it  may  have  realized  or  for 
such  damages  as  the  plaintiff  may 
have  sustained  by  reason  of  the  illegal 
use." 

^nienendez  v.  Holt,  128  U.  S.  514; 
McLean  v.  Fleming,  96  U.  S.  245;  Wor- 
cester Brewing  Co.  v.  Rueter  &  Co.,  157 
Fed.  217;  International  Silver  Co.  v. 
Rogers  Corporation,  66  N.  J.  Eq.  140; 
57  Atl.  1037. 


734  Profits  and  Damages 

or  unfair  competition,  in  which  to  investigate  the  facts  and  be 
sure  that  his  information  is  correct.^" 

He  should,  liowevcr,  within  a  reasonable  time  after  he  has 
definite  infonnation  of  the  invasion  of  his  rights,  warn  the  in- 
vader, and  give  the  latter  an  opportunity  to  discontinue  its  ob- 
jectionable practices.  The  failure  to  give  such  a  warning  has  no 
bearing  on  plaintiff's  right  to  an  injunction,''^ 

In  International  Silver  Co.  v.  Wrn.  H.  Rogers  Corporation,^^'^ 
defendant  was  incorporated  and  did  business  under  a  name 
which,  as  complainant  clamied,  and  the  court  adjudged,  con- 
stituted unfair  competition.  Complainant  had  not  begun  suit 
until  more  than  a  year  after  defendant  was  organized  and  went 
into  business,  and  had  not  notified  defendant  of  its  intention 
to  proceed  against  it,  although  defendant  had  during  this  interval 
expended  large  sums  in  developing  its  business.  Held  that  no 
accounting  for  profits  would  be  ordered. 

The  vice  chancellor  says  that  the  complainant  ''should  not  be 
permitted  to  stand  by,  knowing  that  defendant  is  devoting  its 
money  and  efforts  to  building  up  a  business;  wait  until  after  he 
has  made  profits,  and  then  come  in  and  demand  them  as  its 
own." 

Where  such  notice  is  given,  a  delay  for  a  considerable 
time,  while  negotiations  are  going  on,  is  not  considered 
laches.  ^^ 

Where  an  infringing  label  is  designed  and  used  in  good  faith, 
and  in  ignorance  of  complainant's  rights,  a  much  shorter  delay  will 
be  considered  laches,  than  where  the  infringement  was  mten- 
tional.^^ 

§  430.  Damages  in  Suits  at  Law  for  Unfair  Competition.  — 
Actions  at  law  for  unfair  competition  or  infringement  of  trade- 
marks are  few,  but  there  are  good  reasons  for  using  this  side  of  the 
court  where  damages  are  the  main  end  sought  in  the  litigation. 
In  cases  of  this  sort,  punitive  damages  may  be  asked  by  and  given 

"  Worcester  Brewing  Co.  v.  Rveter  &  ^-  Nelson  v.  Winchell,  203  Mass.  75; 

Co.,  157  Fed.  217.  89  N.  E.  180;  23  L.  R.  A.  (N.  S.)  1150. 

*'  Worcester  Brewing  Co.  v.  Rueter,  **  The  French  Republic  v.  Saratoga 

157  Fed.  217;  The  International  Silver  Vichy  Co.,  191  U.  S.  427;  Worcester 

Co.  V.  Rogers  Corporation,  66  N.  J.  Eq.  Brewing  Co.  v.  Rueter  &  Co.,  157  Fed. 

140.  217;  Saxlehner  v.  Eisner  &  Mendelsohn 

5i«  66  N.  J.  Eq.  140;  57  Atl.  1037.  Co.,  179  U.  S.  19. 


Good  Faith  as  an  Excuse  for  Relieving  Defendant     735 

to  a  plaintiff.  In  Lampert  v.  Judge  Co.,^^"  a  verdict  for  one  cent 
compensatory  damage  and  $500  punitive  damages  was  upheld, 
and  the  rule  is  then  laid  down  that  an  award  of  nominal  damages, 
as  in  that  case  will  support  a  further  award  of  punitive  damages. 

The  principle  of  punitive  damages  is  the  basis  of  the  rule  in  the 
trade-mark  statute,  permitting  the  court  to  treble  any  award  of 
damage. ^^^  This  provision  of  the  statute  is  no  doubt  a  modification 
of  the  common-law  rule  in  this  regard. 

Judge  Blodgett,  in  Warner  v.  Roehr,^^"  a  case  for  the  infringe- 
ment of  a  trade-mark,  instructed  the  jury  that  exemplary  damages 
might  be  allowed  in  cases  of  this  character,  where  the  court  is 
satisfied  from  the  proof  and  from  the  admissions  in  the  case 
that  the  fraud  —  the  intention  to  defraud  —  is  at  the  bottom 
of  the  matter.  Paul  on  Trade-Marks  (§  324)  and  Browne  on 
Trade-marks  (§§  519  and  520)  hold  in  favor  of  such  allowance. 

§  431.  Good  Faith  as  an  Excuse  for  Relieving  Defendant  from 
Paying  Damages.  —  The  question  has  several  times  arisen 
whether  inadvertence  on  the  part  of  a  defendant,  or  even  the 
utmost  good  faith,  in  regard  to  the  use  of  a  name,  mark  or  other 
indicia  complained  of  will  excuse  him  to  the  extent  of  giving  him 
exemption  from  an  accounting,  of  profits  and  damages. 

In  N.  K.  Fairhank  Co.  v.  Windsor, ^^"^  the  Circuit  Court  of 
Appeals  held  that  the  good  faith  of  the  defendant  was  such 
that  it  was  improper  to  order  an  accounting  of  damages  and 
profits.  In  this  case  the  acts  complained  of  had  been  done  in 
reliance  on  a  decision  that  was  reversed,  and  the  acts  complained 
of  ceased  as  soon  as  this  reversal  occurred.  Judge  Lacombe 
said:  ''It  would  be  straining  the  doctrine  of  implied  intent  beyond 
all  reasonable  bounds  to  hold  that  one  who  bought,  made  and  sold 
while  that  decision  *  *  *  remained  in  force  intended  to 
enter  into  an  '  unlawful  competition.'  " 

""238  Mo.  409-1914;   141  S.   W.  "'^  29  Fed.  Case.  266,  No.   17,189a- 

1095.  1884. 

"^  Section  16,  Trade  Mark  Act  of  "'^  124  Fed.  200. 
1905. 


APPENDIX 

UNITED  STATES  STATUTES 
CONCERNING  THE   REGISTRATION   OF 

TRADEMARKS 


THE  RULES  OF  THE  PATENT  OFFICE 
RELATING  THERETO 


PAGE 

Trade-mark  laws  of  the  United  States '.....     5 

Act  approved  February  20,  1905  (as  amended) 5 

Act  of  May  4,  1906 13 

Extract  from  an  act  to  incorporate  the  American  National  Red  Cross 14 

Rules  governing  the  registration  of  trade-marks  under  the  trade-mark  acts 15 

Correspondence 15 

Attorneys 16 

Who  may  register  a  trade-mark 16 

What  may  be  registered  as  a  trade-mark 17 

The  application 18 

Drawing 21 

Examination  of  applications 21 

Amendments 22 

Interference,  opposition,  and  cancellation 23 

Appeals 25 

Abandoned  applications 26 

Issue,  date,  and  duration  of  certificate 26 

Assignments 27 

Copies  and  publications 27 

Fees 28 

Repayment  of  money 28 

Notice  of  registration 28 

Amendments  of  the  rules 29 

Questions  not  specifically  provided  for 29 

Recording  trade-marks  with  collectors  of  customs 29 

Forms 31 

Petition 31 

Statement  for  an  individual 31 

Declaration  for  an  individual 31 

Statement  for  a  firm 32 

Declaration  for  a  firm 33 

Statement  for  a  corporation  or  association 33 

Declaration  for  a  corporation  or  association 34 

Declaration  for  applicants  under  the  ten-year  proviso 34 

Declaration  for  foreigner 35 

Statement  for  an  individual  under  section  3  of  the  act  of  May  4,  1906 36 

Declaration  for  foreigners  under  section  3  of  the  act  of  May  4,  1906 36 

Notice  of  opposition 37 

Application  for  cancellation  of  trade-mark 37 

Classification  of  merchandise  under  the  act  of  May  4,  1900 40 

Indexes 41 

Index  to  trade-mark  statutes 41 

Index  to  trade-mark  rules 48 

Index  to  trade-mark  forms 53 

[737] 


REGISTRATION  OF  TRADE-MARKS 


TRADE-MARK  LAWS  OF  THE  UNITED  STATES 

ACT  OF  FEBRUARY  20,   1905   (AS  AMENDED) 

AN  ACT  To  authorize  the  registration  of  trade-marks  used  in  commerce  with  for- 
eign nations  or  among  the  several  States  or  with  Indian  tribes,  and  to  protect  the 
same. 

Be  it  enacted  hy  the  Senate  and  House  of  Representatives  of  the  United 
States  of  America  in  Congress  assembled,  That  the  owner  of  a  trade- 
mark used  in  commerce  with  foreign  nations,  or  among  the  several 
States,  or  with  Indian  tribes,  provided  such  owner  shall  be  domiciled 
within  the  territory  of  the  United  States,  or  resides  in  or  is  located 
in  any  foreign  country  which,  by  treaty,  convention,  or  law,  affords 
similar  privileges  to  the  citizens  of  the  United  States,  may  obtain  regis- 
tration for  such  trade-mark  by  complying  with  the  following  require- 
ments: First,  by  filing  in  the  Patent  Office  an  application  therefor,  in 
writing,  addressed  to  the  Commissioner  of  Patents,  signed  by  the  ap- 
plicant, specifying  his  name,  domicile,  location,  and  citizenship;  the  class 
of  merchandise  and  the  particular  description  of  goods  comprised  in  such 
class  to  which  the  trade-mark  is  appropriated;  a  statement  of  the  mode 
in  which  the  same  is  applied  and  affixed  to  goods,  and  the  length  of  time 
during  which  the  trade-mark  has  been  used ;  a  description  of  the  trade- 
mark itself  shall  be  included,  if  desired  by  the  applicant 
of  Feb.°i8?'i909?^  ^°^  ^^  required  by  the  commissioner,  provided  such  descrip- 
tion is  of  a  character  to  meet  the  approval  of  the  com- 
missioner. With  this  statement  shall  be  filed  a  drawing  of  the  trade- 
mark, signed  by  the  applicant,  or  his  attorney,  and  such  number  of 
specimens  of  the  trade-mark  as  actually  used  as  may  be  required  by 
the  Commissioner  of  Patents.  Second,  by  paying  into  the  Treasury  of 
the  United  States  the  sum  of  ten  dollars,  and  otherwise  complying  with 
the  requirements  of  this  act  and  such  regulations  as  may  be  prescribed 
by  the  Commissioner  of  Patents. 

Sec.  2.  That  the  application  prescribed  in  the  foregoing  section,  in 
order  to  create  any  right  whatever  in  favor  of  the  party  fifing  it,  must 
be  accompanied  by  a  written  declaration  verified  by  the  appficant,  or 
by  a  member  of  the  firm  or  an  officer  of  the  corporation  or  association 
applying,  to  the  effect  that  the  applicant  believes  himself  or  the  firm, 
corporation,  or  association  in  whose  behalf  he  makes  the  appUcation 
to  be  the  owner  of  the  trade-mark  sought  to  be  registered,  and  that  no 
other  person,  firm,  corporation,  or  association,  to  the  best  of  the  appli- 
cant's knowledge  and  befief,  has  the  right  to  use  such  trade-mark  in 
the  United  States,  either  in  the  identical  form  or  in  such 
of  Feb.™!?  1909^^^''*  '^sar  resemblance  thereto  as  might  be  calculated  to  de- 
ceive ;  that  such  trade-mark  is  used  in  commerce  among 
the  several  States,  or  with  foreign  nations,  or  with  Indian  tribes,  and  that 
the  description  and  drawing  presented  truly  represent  the  trade-mark 
sought  to  be  registered.  If  the  applicant  resides  or  is  located  in  a 
foreign  country,  the  statement  required  shall,  in  addition  to  the  foregoing, 

[739]       5 


t)        [740]  Registration  of  Trade-Marks 

set  forth  that  the  trade-mark  has  been  registered  by  the  applicant,  or 
that  an  application  for  the  registration  thereof  has  been  filed  by  him 
in  the  foreign  country  in  which  he  resides  or  is  located,  and  shall  give  the 
date  of  such  registration,  or  the  application  therefor,  as  the  case  may  be, 
except  that  in  the  application  in  such  cases  it  shall  not  be  necessary  to 
state  that  the  mark  has  been  used  in  commerce  with  the  United  States 
or  among  the  States  thereof.  The  verification  required  by  this  section 
may  be  made  before  any  person  within  the  United  States  authorized 
by  law  to  administer  oaths,  or,  when  the  applicant  resides  in  a  foreign 
country,  before  any  minister,  charge  d'affaires,  consul,  or  commercial 
agent  holding  commission  under  the  Government  of  the  United  States, 
or  before  any  notary  public,  judge,  or  magistrate  having  an  official  seal 
and  authorized  to  administer  oaths  in  the  foreign  country  in  which  the 
applicant  may  be  whose  authority  shall  be  proved  by  a  certificate  of  a 
diplomatic  or  consular  officer  of  the  United  States. 

Sec.  3.  That  every  applicant  for  registration  of  a  trade-mark,  or 
for  renewal  of  registration  of  a  trade-mark,  who  is  not  domiciled  within 
the  United  States,  shall,  before  the  issuance  of  the  certificate  of  registra- 
tion, as  hereinafter  provided  for,  designate,  by  a  notice  in  writing,  filed 
in  the  Patent  Office,  some  person  residing  within  the  United  States 
on  whom  process  or  notice  of  proceedings  affecting  the  right  of  ownership 
of  the  trade-mark  of  which  such  applicant  may  claim  to  be  the  owner, 
brought  under  the  provisions  of  this  act  or  under  other  laws  of  the 
United  States,  may  be  served,  with  the  same  force  and  effect  as  if  served 
upon  the  applicant  or  registrant  in  person.  For  the  purposes  of  this 
act  it  shall  be  deemed  sufficient  to  serve  such  notice  upon  such  applicant, 
registrant,  or  representative  by  leaving  a  copy  of  such  process  or  notice 
addressed  to  him  at  the  last  address  of  which  the  Commissioner  of  Pat- 
ents has  been  notified. 

Sec.  4.  That  an  application  for  registration  of  a  trade-mark  filed  in 
this  country  by  any  person  who  has  previously  regularly  filed  in  any 
foreign  country  which,  by  treaty,  convention,  or  law,  affords  similar 
privileges  to  citizens  of  the  United  States  an  application  for  registration 
of  the  same  trade-mark  shall  be  accorded  the  same  force  and  effect 
as  would  be  accorded  to  the  same  application  if  filed  in  this  country 
on  the  date  on  which  application  for  registration  of  the  same  trade-mark 
was  first  filed  in  such  foreign  country:  Provided,  That  such  application 
is  filed  in  this  country  within  four  months  from  the  date  on  which  the 
application  was  first  filed  in  such  foreign  country:  Ayid  pronided,  That 
certificate  of  registration  shall  not  be  issued  for  any  mark  for  registra- 
tion of  which  application  has  been  filed  by  an  applicant  located  in  a 
foreign  country  until  such  mark  has  been  actually  registered  by  the 
applicant  in  the  country  in  which  he  is  located. 

Sec.  5.  That  no  mark  by  which  the  goods  of  the  owner  of  the  mark 
may  be  distinguished  from  other  goods  of  the  same  class  shall  be  refused 
registration  as  a  trade-mark  on  account  of  the  nature  of  such  mark  un- 
less such  mark — 

(a)  Consists  of  or  comprises  immoral  or  scandalous  matter. 

(6)  Consists  of  or  comprises  the  flag  or  coat  of  arms  or  other  insignia 
of  the  United  States  or  any  simulation  thereof,  or  of  any  State  or  munici- 
pality or  of  any  foreign  nation,  or  of  any  design  or  picture  that  has  been 
or  may  hereafter  be  adopted  by  any  fraternal  society  as  its  emblem, 


Registration  of  Trade-Marks  [741]        7 

or  of  any  name,  distinguishing  mark,  character,  emblem,  colors,  flag,  or 
banner  adopted  by  any  institution,  organization,  club,  or  society  which  was 
incorporated  in  any  State  in  the  United  States  prior  to  the  date  of  the  adop- 
tion and  use  by  the  applicant:  Provided,  That  said  name, 
oAln^s^^^^iz^ ^'^^  distinguishing  mark,  character,  emblem,  colors,  flag,  or 
banner  ivns  adopted  and  publicly  used  by  said  institution, 
organization,  club,  or  society  prior  to  the  date  of  adoption  and  use  by  the 
applicant:  Provided,  That  trade-marks  which  are  identical  with  a  regis- 
tered or  known  trade-mark  owned  and  in  use  by  another  and  appropriated 
to  merchandise  of  the  same  descriptive  properties,  or  which  so  nearly 
resem})le  a  registered  or  known  trade-mark  owned  and  in  use  by  another 
and  appropriated  to  merchandise  of  the  same  descriptive  properties 
as  to  be  likely  to  cause  confusion  or  mistake  in  the  mind  of  the  public 
or  to  deceive  purchasers  shall  not  be  registered :  Provided,  That  no  mark 
which  consists  merely  in  the  name  of  an  individual,  firm,  corporation, 
or  association  not  written,  printed,  impressed,  or  woven  in  some  par- 
ticular or  distinctive  manner,  or  in  association  with  a  portrait  of  the  in- 
dividual, or  merely  in  words  or  devices  which  are  descriptive  of  the  goods 
with  which  they  are  used,  or  of  the  character  or  quality  of  such  goods, 
or  merely  a  geographical  name  or  term,  shall  be  registered  under  the 
terms  of  this  Act:  Provided  further.  That  no  portrait  of  a  living  individual 
may  be  registered  as  a  trade-mark  except  by  the  consent  of  such  in- 
dividual, evidenced  by  an  instrument  in  writing:  And  provided  further. 
That  nothing  herein  shall  prevent  the  registration  of  any  mark  used  by 
the  applicant  or  his  predecessors,  or  by  those  from  whom  title  to  the  mark 
is  derived,  in  commerce  with  foreign  nations  or  among  the  several  States 
or  with  Indian  tribes  which  was  in  actual  and  exclusive  use  as  a  trade- 
mark of  the  applicant,  or  his  predecessors  from  whom  he  derived  title,  for 
ten  years  next  preceding  February  twentieth,  nineteen  hundred  and 
five:  Provided  further,  That  nothing  herein  shall  prevent  the  registra- 
tion of  a  trade-mark  otherwise  registrable  because  of  its  being  the  name 
of  the  applicant  or  a  portion  thereof. 

Sec.  6.  That  on  the  filing  of  an  application  for  registration  of  a  trade- 
mark which  complies  with  the  requirements  of  this  act,  and  the  payment 
of  the  fees  herein  provided  for,  the  Commissioner  of  Patents  shall  cause 
an  examination  thereof  to  be  made;  and  if  on  such  examination  it  shall 
appear  that  the  applicant  is  entitled  to  have  his  trade-mark  registered 
under  the  provisions  of  this  act,  the  commissioner  shall  cause  the  mark 
to  be  published  at  least  once  in  the  Official  Gazette  of  the  Patent  Office. 
Any  person  who  believes  he  would  be  damaged  by  the  registration  of  a 
mark  may  oppose  the  same  by  filing  notice  of  opposition,  stating  the 
grounds  therefor,  in  the  Patent  Office  within  thirty  days  after  the  pub- 
lication of  the  mark  sought  to  be  registered,  which  said  notice  of  opposi- 
tion shall  be  verified  by  the  person  filing  the  same  before  one  of  the 
officers  mentioned  in  section  two  of  this  act.  An  opposition  may  be 
filed  by  a  duly  authorized  attorney,  but  such  opposi- 
of  MarrS'!'''"''  tion  shall  be  null  and  void  unless  verified  by  the  op- 
poser  within  a  reasonable  time  after  such  filing.  If 
no  notice  of  opposition  is  filed  within  said  time,  the  commissioner  shall 
issue  a  certificate  of  registration  therefor,  as  hereinafter  provided  for. 
If  on  examination  an  application  is  refused,  the  commissioner  shall 
notify  the  applicant,  giving  him  his  reasons  therefor. 


8        [742]  Registration  of  Trade-Marks 

Sec.  7.  That  in  all  cases  where  notice  of  opposition  has  been  filed 
the  Commissioner  of  Patents  shall  notify  the  applicant  thereof  and 
the  grounds  therefor. 

Whenever  application  is  made  for  the  registration  of  a  trade-mark 
which  is  substantial!}'  identical  with  a  trade-mark  appropriated  to  goods 
of  the  same  descriptive  properties,  for  which  a  certificate  of  registration 
has  been  previously  issued  to  another,  or  for  registration  of  which  another 
has  previously  made  application,  or  which  so  nearly  resembles  such 
trade-mark,  or  a  known  trade-mark  owned  and  used  by  another,  as, 
in  the  opinion  of  the  commissioner,  to  be  likely  to  be  mistaken  therefor 
by  the  public,  he  may  declare  that  an  interference  exists  as  to  such  trade- 
mark, and  in  every  case  of  interference  or  opposition  to  registration 
he  shall  direct  the  examiner  in  charge  of  interferences  to  determine  the 
question  of  the  right  of  registration  to  such  trade-mark,  and  of  the 
sufficiency  of  objections  to  registration,  in  such  manner  and  upon  such 
notice  to  those  interested  as  the  commissioner  may  by  rules  pre- 
scribe. 

The  commissioner  may  refuse  to  register  the  mark  against  the  reg- 
istration of  which  objection  is  filed,  or  may  refuse  to  register  both  of 
two  interfering  marks,  or  may  register  the  mark,  as  a  trade-mark, 
for  the  person  first  to  adopt  and  use  the  mark,  if  otherwise  entitled  to 
register  the  same,  unless  an  appeal  is  taken,  as  hereinafter  provided 
for,  from  his  decision,  by  a  party  interested  in  the  proceeding,  within 
such  time  (not  less  than  twenty  days)  as  the  commissioner  may  pre- 
scribe. 

Sec.  8.  That  every  applicant  for  the  registration  of  a  trade-mark, 
or  for  the  renewal  of  the  registration  of  a  trade-mark,  which  application 
is  refused,  or  a  party  to  an  interference  against  whom  a  decision  has  been 
rendered,  or  a  party  who  has  filed  a  notice  of  opposition  as  to  a  trade- 
mark, may  appeal  from  the  decision  of  the  examiner  in  charge  of  trade- 
marks, or  the  examiner  in  charge  of  interferences,  as  the  case  may  be, 
to  the  commissioner  in  person,  having  once  paid  the  fee  for  such 
appeal. 

Sec.  9.  That  if  an  applicant  for  registration  of  a  trade-mark,  or  a 
party  to  an  interference  as  to  a  trade-mark,  or  a  party  who  has  filed 
opposition  to  the  registration  of  a  trade-mark,  or  party  to  an  applica- 
tion for  the  cancelation  of  the  registration  of  a  trade-mark,  is  dissat- 
isfied with  the  decision  of  the  Commissioner  of  Patents,  he  may  appeal 
to  the  court  of  appeals  of  the  District  of  Columbia,  on  complying  with 
the  conditions  required  in  case  of  an  appeal  from  the  decision  of  the 
commissioner  by  an  applicant  for  patent,  or  a  party  to  an  interference 
as  to  an  invention,  and  the  same  rules  of  practice  and  procedure  shall 
govern  in  every  stage  of  such  proceedings,  as  far  as  the  same  may  be 
applicable. 

Sec.  10.  That  every  registered  trade-mark,  and  every  mark  for 
the  registration  of  which  application  has  been  made,  together  with 
the  application  for  registration  of  the  same,  shall  be  assignable  in  con- 
nection with  the  good  will  of  the  business  in  which  the  mark  is  used. 
Such  assignment  must  be  by  an  instrument  in  writing  and  duly  ac- 
knowledged according  to  the  laws  of  the  country  or  State  in  which 
the  same  is  executed;  any  such  assignment  shall  be  void  as  against  any 
subsequent   purc^haser  for  a   valuable   consideration,   without  notice, 


Registration  of  Trade-Marks  [743]        9 

unless  it  is  recorded  in  the  Patent  Office  within  three  months  from 
date  thereof.  The  commissioner  shall  keep  a  record  of  such  assign- 
ments. 

Sec.  11.  That  certificates  of  registration  of  trade-marks  shall  be 
issued  in  the  name  of  the  United  States  of  America,  under  the  seal  of 
the  Patent  Office,  and  shall  be  signed  by  the  Commissioner  of  Patents, 
and  a  record  thereof,  together  with  printed  copies  of  the  drawing  and 
statement  of  the  applicant,  shall  be  kept  in  books  for  that  purpose. 
The  certificate  shall  state  the  date  on  which  the  application  for  regis- 
tration was  received  in  the  Patent  Office.  Certificates  of  registration 
of  trade-marks  may  be  issued  to  the  assignee  of  the  applicant,  but  the 
assignment  must  first  be  entered  of  record  in  the  Patent  Office. 

Written  or  printed  copies  of  any  records,  books,  papers,  or  drawings 
relating  to  trade-marks  belonging  to  the  Patent  Office,  and  of  certifi- 
cates of  registration,  authenticated  by  the  seal  of  the  Patent  Office 
and  certified  by  the  commissioner  thereof,  shall  be  evidence  in  all  cases 
wherein  the  originals  could  be  evidence;  and  any  person  making  applica- 
tion therefor  and  pajdng  the  fee  required  by  law  shall  have  certified 
copies  thereof. 

Sec.  12.  That  a  certificate  of  registration  shall  remain  in  force  for 
twenty  years,  except  that  in  the  case  of  trade-marks  previously  regis- 
tered in  a  foreign  country  such  certificates  shall  cease  to  be  in  force  on 
the  day  on  which  the  trade-mark  ceases  to  be  protected  in  such  foreign 
country,  and  shall  in  no  case  remain  in  force  more  than  twenty  years, 
unless  renewed.  Certificates  of  registration  may  be  from  time  to  time 
renewed  for  like  periods  on  payment  of  the  renewal  fees  required  by 
this  act,  upon  request  by  the  registrant,  his  legal  representatives,  or 
transferees  of  record  in  the  Patent  Office,  and  such  request  may  be 
made  at  any  time  not  more  than  six  months  prior  to  the  expiration  of 
the  period  for  which  the  certificates  of  registration  were  issued  or 
renewed.  Certificates  of  registration  in  force  at  the  date  at  which  this 
act  takes  effect  shall  remain  in  force  for  the  period  for  which  they  were 
issued,  but  shall  be  renewable  on  the  same  conditions  and  for  the  same 
periods  as  certificates  issued  under  the  provisions  of  this  act,  and  when 
so  renewed  shall  have  the  same  force  and  effect  as  certificates  issued 
under  this  act. 

Sec.  13.  That  whenever  any  person  shall  deem  himself  injured  by 
the  registration  of  a  trade-mark  in  the  Patent  Office  he  may  at  any 
time  apply  to  the  Commissioner  of  Patents  to  cancel  the  registration 
thereof.  The  commissioner  shall  refer  such  application  to  the  examiner 
in  charge  of  interferences,  who  is  empowered  to  hear  and  determine  this 
question  and  who  shall  give  notice  thereof  to  the  registrant.  If  it  ap- 
pear after  a  hearing  before  the  examiner  that  the  registrant  was  not 
entitled  to  the  use  of  the  mark  at  the  date  of  his  application  for  regis- 
tration thereof,  or  that  the  mark  is  not  used  by  the  registrant,  or  has 
been  abandoned,  and  the  examiner  shall  so  decide,  the  commissioner 
shall  cancel  the  registration.  Appeal  may  be  taken  to  the  commis- 
sioner in  person  from  the  decision  of  examiner  of  interferences. 

Sec.  14.  That  the  following  shall  be  the  rates  for  trade-mark  fees: 

On  filing  each  original  application  for  registration  of  a  trade-mark, 
ten  dollars:  Provided,  That  an  application  for  registration  of  a  trade- 
mark pending  at  the  date  of  the  passage  of  this  act,  and  on  which  cer- 


10        [744]  Registration  of  Trade-Marks 

tificate  of  registration  shall  not  have  issued  at  such  date,  may,  at  the 
option  of  the  applicant,  be  proceeded  with  and  registered  under  the 
provisions  of  this  act  without  the  payment  of  further  fee. 

On  filing  each  appUcation  for  renewal  of  the  registration  of  a  trade- 
mark, ten  dollars. 

On  filing  notice  of  opposition  to  the  registration  of  a  trade-mark, 
ten  dollars. 

On  an  appeal  from  the  examiner  in  charge  of  trade-marks  to  the 
Commissioner  of  Patents,  fifteen  dollars. 

On  an  appeal  from  the  decision  of  the  examiner  in  charge  of  inter- 
ferences, awarding  ownership  of  a  trade-mark  or  canceling  the  regis- 
tration of  a  trade-mark,  to  the  Commissioner  of  Patents,  fifteen  dollars. 

For  certified  and  uncertified  copies  of  certificates  of  registration 
and  other  papers,  and  for  recording  transfers  and  other  papers,  the 
same  fees  as  required  by  law  for  such  copies  of  patents  and  for  recording 
assignments  and  other  papers  relating  to  patents. 

Sec.  15.  That  sections  forty-nine  hundred  and  thirty-five  and  forty- 
nine  hundred  and  thirty-six  of  the  Revised  Statutes,  relating  to  the 
payment  of  patent  fees  and  to  the  repayment  of  fees  paid  by  mistake, 
are  hereby  made  applicable  to  trade-mark  fees. 

Sec.  16.  That  the  registration  of  a  trade-mark  under  the  provisions 
of  this  act  shall  be  prima  facie  evidence  of  ownership.  Any  person  who 
shall,  without  the  consent  of  the  owner  thereof,  reproduce,  counterfeit, 
copy,  or  colorably  imitate  any  such  trade-mark  and  affix  the  same  to 
merchandise  of  substantially  the  same  descriptive  properties  as  those 
set  forth  in  the  registration,  or  to  labels,  signs,  prints,  packages,  wrap- 
pers, or  receptacles  intended  to  be  used  upon  or  in  connection  with  the 
sale  of  merchandise  of  substantially  the  same  descriptive  properties  as 
those  set  forth  in  such  registration,  and  shall  use,  or  shall  have  used, 
such  reproduction,  counterfeit,  copy,  or  colorable  imitation  in  commerce 
among  the  several  States,  or  with  a  foreign  nation,  or  with  the  Indian 
tribes,  shall  he  hable  to  an  action  for  damages  therefor  at  the  suit  of  the 
owner  thereof;  and  whenever  in  any  such  action  a  verdict  is  rendered 
for  the  plaintiff,  the  court  may  enter  judgment  therein  for  any  sum 
above  the  amount  found  by  the  verdict  as  the  actual  damages,  accord- 
ing to  the  circumstances  of  the  case,  not  exceeding  three  times  the  amount 
of  such  verdict,  together  with  the  costs. 

Sec.  17.  That  the  circuit  and  territorial  courts  of  the  United  States 
and  the  supremo  court  of  the  District  of  Columbia  shall  have  original 
jurisdiction,  and  the  circuit  courts  of  appeal  of  the  United  States  and 
the  court  of  appeals  of  the  District  of  Columbia  shall  have  appellate 
jurisdiction  of  all  suits  at  law  or  in  equity  respecting  trade-marks  regis- 
tered in  accordance  with  the  provisions  of  this  act,  arising  under  the 
present  act,  without  regard  to  the  amount  in  controversy. 

Sec.  18.  That  writs  of  certiorari  may  be  granted  by  the  Supreme 
Court  of  the  United  States  for  the  review  of  cases  arising  under  this  act 
in  the  same  manner  as  provided  for  patent  cases  by  the  act  creating  the 
circuit  court  of  appeals. 

Sec.  19.  That  the  several  courts  vested  with  jurisdiction  of  cases 
arising  under  the  present  act  shall  have  power  to  grant  injunctions, 
according  to  the  course  and  principles  of  equity,  to  prevent  the  viola- 
tion of  anj-^  right  of  the  owner  of  a  trade-mark  registered  under  this 


Registration  of  Trade-Marks  [745]        11 

act,  on  such  terms  as  the  court  may  deem  reasonable;  and  upon  a 
decree  being  rendered  in  any  such  case  for  wrongful  use  of  a  trade- 
mark the  complainant  shall  be  entitled  to  recover,  in  addition  to  the 
profits  to  be  accounted  for  by  the  defendant,  the  damages  the  com- 
plainant has  sustained  thereby,  and  the  court  shall  assess  the  same  or 
cause  the  same  to  be  assessed  under  its  direction.  The  court  shall  have 
the  same  power  to  increase  such  damages,  in  its  discretion,  as  is  given 
by  section  sixteen  of  this  act  for  increasing  damages  found  by  verdict 
in  actions  of  law;  and  in  assessing  profits,  the  plaintiff  shall  be  required 
to  prove  defendant's  sales  only;  defendant  must  prove  all  elements  of 
cost  which  are  claimed. 

Sec.  20.  That  in  any  case  involving  the  right  to  a  trade-mark  regis- 
tered in  accordance  with  the  provisions  of  this  act,  in  which  the  ver- 
dict has  been  found  for  the  plaintiff,  or  an  injunction  issued,  the  court 
may  order  that  all  labels,  signs,  prints,  packages,  wrappers,  or  recep- 
tacles in  the  possession  of  the  defendant,  bearing  the  trade-mark  of 
the  plaintiff  or  complainant,  or  any  reproduction,  counterfeit,  copy, 
or  colorable  imitation  thereof,  shall  be  delivered  up  and  destroyed. 
Any  injunction  that  may  be  granted  upon  hearing,  after  notice  to  the 
defendant,  to  prevent  the  violation  of  any  right  of  the  owner  of  a  trade- 
mark registered  in  accordance  with  the  provisions  of  this  act,  by  any 
circuit  court  of  the  United  States,  or  by  a  judge  thereof,  may  be  served 
on  the  parties  against  whom  such  injunction  may  be  granted  anywhere 
in  the  United  States  where  they  may  be  found,  and  shall  be  operative, 
and  may  be  enforced  by  proceedings  to  punish  for  contempt,  or  other- 
wise, by  the  court  by  which  such  injunction  was  granted,  or  by  any 
other  circuit  court,  or  judge  thereof,  in  the  United  States,  or  by  the 
Supreme  Court  of  the  District  of  Columbia,  or  a  judge  thereof.  The  said 
courts,  or  judges  thereof,  shall  have  jurisdiction  to  enforce  said  injunc- 
tion, as  herein  provided,  as  fully  as  if  the  injunction  had  been  granted 
by  the  circuit  court  in  which  it  is  sought  to  be  enforced.  The  clerk  of  the 
court  or  judge  granting  the  injunction  shall,  when  required  to  do  so  by 
the  court  before  which  application  to  enforce  said  injunction  is  made, 
transfer  without  delay  to  said  court  a  certified  copy  of  all  the  papers 
on  which  the  said  injunction  was  granted  that  are  on  file  in  his  office. 

Sec.  21.  That  no  action  or  suit  shall  be  maintained  under  the  provi- 
sions of  this  act  in  any  case  when  the  trade-mark  is  used  in  unlawful 
business,  or  upon  any  article  injurious  in  itself,  or  which  mark  has  been 
used  with  the  design  of  deceiving  the  public  in  the  purchase  of  mer- 
chandise, or  has  been  abandoned,  or  upon  any  certificate  of  registra- 
tion fraudulently  obtained. 

Sec.  22.  That  whenever  there  are  interfering  registered  trade-marks, 
any  person  interested  in  any  one  of  them  may  have  relief  against  the 
interfering  registrant,  and  all  persons  interested  under  him,  by  suit 
in  equity  against  the  said  registrant;  and  the  court,  on  notice  to  adverse 
parties  and  other  due  proceedings  had  according  to  the  course  of  equity, 
may  adjudge  and  declare  either  of  the  registrations  void  in  whole  or  in 
part  according  to  the  interest  of  the  parties  in  the  trade-mark,  and  may 
order  the  certificate  of  registration  to  be  delivered  up  to  the  Commis- 
sioner of  Patents  for  cancellation. 

Sec.  23.  That  nothing  in  this  act  shall  prevent,  lessen,  impeach,  or 
avoid  any  remedy  at  law  or  in  equity  which  any  party  aggrieved  by 


12        [746]  Registration  of  Trade-Marks 

any  wrongful  use  of  any  trade-mark  might  have  had  if  the  provisions 
of  this  act  had  not  been  passed. 

Sec.  24.  That  all  applications  for  registration  pending  in  the  office 
of  the  Coniniissioner  of  Patents  at  the  time  of  the  passage  of  this  act 
may  be  amended  with  a  view  to  bringing  them,  and  the  certificate  issued 
upon  such  ajiplications,  under  its  provisions,  and  the  prosecution  of 
such  applications  may  be  proceeded  with  under  the  provisions  of  this 
act. 

Sec.  25.  That  any  person  who  shall  procure  registration  of  a  trade- 
mark, or  entry  th(>reof,  in  the  office  of  the  Commissioner  of  Patents 
l)y  a  false  or  fraudulent  declaration  or  representation,  oral  or  in  writ- 
ing, or  by  any  false  means,  shall  be  liable  to  pay  anj^  damages  sus- 
tained in  consequence  thereof  to  the  injured  party,  to  be  recovered  fjy 
an  action  on  the  case. 

Sec.  26.  That  the  Commissioner  of  Patents  is  authorized  to  make 
rules  and  regulations,  not  inconsistent  with  law,  for  the  conduct  of  pro- 
ceedings in  reference  to  the  registration  of  trade-marks  provided  for 
by  this  act. 

Sec.  27.  That  no  article  of  imported  merchandise  which  shall  copy 
or  simulate  the  name  of  any  domestic  manufacture,  or  manufacturer 
or  trader,  or  of  any  manufacturer  or  trader  located  in  any  foreign  coun- 
try which,  by  treaty,  convention,  or  law  affords  similar  privileges  to 
citizens  of  the  United  States,  or  which  shall  copy  or  simulate  a  trade- 
mark registered  in  accordance  with  the  provisions  of  this  act  or  shall 
bear  a  name  or  mark  calculated  to  induce  the  pubhe  to  believe  that 
the  article  is  manufactured  in  the  United  States,  or  that  it  is  man- 
ufactured in  any  foreign  country  or  locality  other  than  the  country 
or  locality  in  which  it  is  in  fact  manufactured,  shall  be  admitted  to  entry 
at  any  customhouse  of  the  United  States;  and,  in  order  to  aid  the  officers 
of  the  customs  in  enforcing  this  prohibition,  any  domestic  manufacturer 
or  trader,  and  any  foreign  manufacturer  or  trader,  who  is  entitled  under 
the  provisions  of  a  treaty,  convention,  declaration,  or  agreement  be- 
tween the  United  States  and  any  foreign  covmtry  to  the  advantages 
afforded  by  law  to  citizens  of  the  United  States  in  respect  to  trade-marks 
and  commercial  names,  may  require  his  name  and  residence,  and  the 
name  of  the  locality  in  which  his  goods  are  manufactured,  and  a  copy 
of  the  certificate  of  registration  of  his  trade-mark,  issued  in  accordance 
with  the  provisions  of  this  act,  to  be  recorded  in  books  which  shall  be 
kept  for  this  purpose  in  the  Department  of  the  Treasury,  under  such 
regulations  as  the  Secretary  of  the  Treasury  shall  prescribe,  and  may 
furnish  to  the  department  facsimiles  of  his  name,  the  name  of  the  lo- 
cality in  which  his  goods  are  manufactured,  or  of  his  registered  trade- 
mark; and  thereupon  the  Secretary  of  the  Treasury  shall  cause  one  or 
more  copi(\s  of  the  same  to  be  transmitted  to  each  collector  or  other 
proper  officer  of  customs. 

Sec.  28.  That  it  shall  be  the  duty  of  the  registrant  to  give  notice  to 
the  public  that  a  trade-mark  is  registered,  either  by  affixing  thereon 
the  words  "Registered  in  U.  S.  Patent  Office,"  or  abbreviated  thus, 
"Reg.  U.  S.  Pat.  Off.,"  or  when,  from  the  character  or  size  of  the  trade- 
mark, or  from  its  manner  of  attachment  to  the  article  to  which  it  is 
appropriated,  this  can  not  be  done,  then  liy  affixing  a  label  containing 
a  like  notice  to  the  package  or  receptacle  wherein  the  article  or  articles 


Registration  op  Trade-Marks  [747]        13 

are  inclosed;  and  in  any  suit  for  infringement  by  a  party  failing  so  to 
give  notice  of  registration  no  damages  shall  be  recovered,  except  on 
proof  that  the  defendant  was  duly  notified  of  infringement  and  con- 
tinued the  same  after  such  notice. 

Sec.  29.  That  in  construing  this  act  the  following  rules  must  be  ob- 
served, except  where  the  contrary  intent  is  plainly  apparent  from  the 
context  thereof:  The  United  States  includes  and  embraces  all  territory 
which  is  under  the  jurisdiction  and  control  of  the  United  States.  The 
word  "States"  includes  and  embraces  the  District  of  Columbia,  the 
Territories  of  the  United  States,  and  such  other  territory  as  shall  be 
under  the  jurisdiction  and  control  of  the  United  States.  The  terms 
"person"  and  "owner,"  and  any  other  word  or  term  used  to  designate 
the  applicant  or  other  entitled  to  a  benefit  or  privilege  or  rendered  liable 
under  the  provisions  of  this  act,  include  a  firm,  corporation,  or  associa- 
tion as  well  as  a  natural  person.  The  term  "applicant"  and  "regis- 
trant "  embrace  the  successors  and  assigns  of  such  applicant  or  registrant. 
The  term  "trade-mark"  includes  any  mark  which  is  entitled  to  regis- 
tration under  the  terms  of  this  act,  and  whether  registered  or  not,  and 
a  trade-mark  shall  be  deemed  to  be  "affixed"  to  an  article  when  it  is 
placed  in  any  manner  in  or  upon  either  the  article  itself  or  the  receptacle 
or  package  or  upon  the  envelope  or  other  thing  in,  by,  or  with  which 
the  goods  are  packed  or  inclosed  or  otherwise  prepared  for  sale  or  dis- 
tribution. 

Sec.  30.  That  this  act  shall  be  in  force  and  take  effect  April  first, 
nineteen  hundred  and  five.  All  acts  and  parts  of  acts  inconsistent  with 
this  act  are  hereby  repealed  except  so  far  as  the  same  may  apply  to  cer- 
tificates of  registration  issued  under  the  act  of  Congi-ess  approved  March 
third,  eighteen  hundred  and  eighty-one,  entitled  "An  act  to  authorize 
the  registration  of  trade-marks  and  protect  the  same,"  or  under  the  act 
approved  August  fifth,  eighteen  hundred  and  eighty-two,  entitled  "An 
act  relating  to  the  registration  of  trade-marks." 

Approved,  February  20,  1905. 

ACT  OF  MAY  4,  1906 

AN  ACT  To  amend  the  laws  of  the  United  States  relating  to  the  registration  of 

trade-marks. 

Sec.  2.  That  the  Commissioner  of  Patents  shall  establish  classes  of 
merchandise  for  the  purpose  of  trade-mark  registration,  and  shall 
determine  the  particular  descriptions  of  goods  comprised  in  each  class. 
On  a  single  application  for  registration  of  a  trade-mark  the  trade-mark 
may  be  registered  at  the  option  of  the  applicant  for  any  or  all  goods 
upon  which  the  mark  has  actually  been  used  comprised  in  a  single  class 
of  merchandise,  provided  the  particular  descriptions  of  goods  be  stated. 

Sec.  3.  That  any  owner  of  a  trade-mark  who  shall  have  a  manufactur- 
ing establishment  within  the  territory  of  the  United  States  shall  be  ac- 
corded, so  far  as  the  registration  and  protection  of  trade-marks  used 
on  the  products  of  such  establishment  are  concerned,  the  same  rights 
and  privileges  that  are  accorded  to  owners  of  trade-marks  domiciled 
within  the  territory  of  the  United  States  by  the  act  entitled  "An  act 
to  authorize  the  registration  of  trade-marks  used  in  commerce  with 
foreign  nations  or  among  the  several  States  or  with  Indian  tribes,  and 


14        [748]  Registration  of  Trade-Marks 

to  protect  the  same,"  approved  February  twentieth,  nineteen  hundred 
and  five. 

Sec.  4.  That  this  act  shall  take  effect  July  first  nineteen  hundred  and 
six. 

Approved,  May  4,  190G. 

ACT   TO   INCORPORATE   THE   AMERICAN    NATIONAL   RED    CROSS,   AP- 
PROVED JANUARY  5,  1905  (AS  AMENDED  JUNE  23,  1910) 

Sec.  4.  That  from  and  after  the  passage  of  this  act  it  shall  be  unlawful 
for  any  person  within  the  jurisdiction  of  the  United  States  to  falsely 
or  fraudulently  hold  himself  out  as  or  represent  or  pretend  himself  to  be 
a  member  of  or  an  agent  for  the  American  National  Red  Cit)ss  for  the 
purpose  of  soliciting,  collecting,  or  receiving  money  or  material;  or  for 
any  person  to  wear  or  display  the  sign  of  the  Red  Cross  or  any  insignia 
colored  in  imitation  thereof  for  the  fraudulent  purpose  of  inducing  the 
belief  that  he  is  a  member  of  or  an  agent  for  the  American  National 
Red  Cross.  It  shall  be  unlawful  for  any  person,  corporation,  or  associa- 
tion other  than  the  American  National  Red  Cross  and  its  duly  author- 
ized employees  and  agents  and  the  Army  and  Navy  sanitary  and  hos- 
pital authorities  of  the  United  States,  for  the  purpose  of  trade  or  as  an 
advertisement,  to  induce  the  sale  of  any  article  whatsoever  or  for  any 
business  or  charitable  purpose  to  use  within  the  territory  of  the  United 
States  of  America  and  its  exterior  possessions  the  emblem  of  the  Greek 
Red  Cross  on  a  white  ground,  or  any  sign  or  insignia  made  or  colored  in 
imitation  thereof,  or  of  the  words  "Red  Cross"  or  "Geneva  Cross"  or 
any  combination  of  these  words:  Provided,  however,  That  no  person,  cor- 
poration, or  association  that  actually  used  or  whose  assignor  actually 
used  the  said  emblem,  sign,  insignia,  or  words  for  any  lawful  purpose 
prior  to  January  fifth,  nineteen  hundred  and  five,  shall  be  deemed 
forbidden  by  this  act  to  continue  the  use  thereof  for  the  same  purpose 
and  for  the  same  class  of  goods.  If  any  person  violates  the  provisions 
of  this  section  he  shall  be  deemed  guilty  of  a  misdemeanor,  and  upon 
conviction  in  any  Federal  court  shall  be  liable  to  a  fine  of  not  less  than 
one  or  more  than  five  hundred  dollars,  or  imprisonment  for  a  term  not 
exceeding  one  year,  or  both,  for  each  and  every  offense. 

Sec.  8.  That  the  endowment  fund  of  the  American  National  Red 
Cross  shall  be  kept  and  invested  under  the  management  and  control 
of  a  board  of  nine  trustees,  who  shall  be  elected  from  time  to  time  by 
the  incorporators  and  their  successors  under  such  regulations  regarding 
terms  and  tenure  of  office,  accountability,  and  expense  as  said  incor- 
porators and  successors  shall  prescribe. 

Approved,  June  23,  1910. 


RULES     GOVERNING    THE    REGISTRATION     OF 
TRADE-MARKS  UNDER  THE  TRADE-MARK  ACTS 

United  States  Patent  Office, 
Washington,  D.  C,  October  15, 1913. 
The  following  rules,  designed  to  be  in  strict  accordance  with  the  pro- 
visions of  the  acts  approved  February  20,  1905,  May  4,  1906,  March  2, 
1907,  February  18,  1909,  February  18,  1911,  and  January  8,  1913,  for 
the  registration  of  trade-marks,  are  published  for  gratuitous  distribu- 
tion. 

Applicants  for  registration  and  their  attorneys  are  advised  that  their 
business  will  be  facilitated  by  the  observance  of  the  forms  on  pages 
33  to  40. 

Thomas  Ewing, 
Commissioner  of  Patents. 

CORRESPONDENCE 

1.  All  business  with  the  office  should  be  transacted  in  writing.  Un- 
less by  the  consent  of  all  parties,  the  action  of  the  office  will  be  based 
exclusively  on  the  written,  record.  No  attention  will  be  paid  to  any 
alleged  oral  promise,  stipulation,  or  understanding  in  relation  to  which 
there  is  disagreement  or  doubt. 

2.  Applicants  and  attorneys  will  be  required  to  conduct  their  business 
with  the  office  with  decorum  and  courtesy.  Papers  presented  in  viola- 
tion of  this  requirement  will  be  returned;  but  all  such  papers  will  first 
be  submitted  to  the  commissioner,  and  only  be  returned  by  his  direct 
order. 

3.  All  letters  should  be  addressed  to  "The  Commissioner  of  Pat- 
ents"; and  all  remittances  by  money  order,  check,  or  draft  should  be 
to  his  order. 

4.  A  separate  letter  should,  in  every  case,  be  written  in  relation  to 
each  distinct  subject  of  inquiry  or  application.  Complaints  against 
the  examiner  in  charge  of  trade-marks,  assignments  for  record,  fees, 
and  orders  for  copies  or  abstracts  must  be  sent  to  the  office  in  separate 
letters. 

5.  Letters  relating  to  pending  applications  should  refer  to  the  name 
of  the  applicant,  the  serial  number  of  the  application,  and  the  date  of 
filing.  Letters  relating  to  registered  trade-marks  should  refer  to  the 
name  of  the  registrant,  the  number  and  date  of  the  certificate,  and  the 
merchandise  to  which  the  trade-mark  is  applied. 

6.  The  personal  attendance  of  applicants  at  the  Patent  Office  is  un- 
necessary.   Their  business  can  be  transacted  by  correspondence. 

7.  When  an  attorney  shall  have  filed  his  power  of  attorney,  duly 
executed,  the  correspondence  will  be  held  with  him. 

8.  A  double  correspondence  with  an  applicant  and  his  attorney,  or 
with  two  attorneys,  can  not,  generally,  be  allowed. 

9.  The  office  can  not  undertake  to  respond  to  inquiries  propounded 
with  a  view  to  ascertain  whether  certain  trade-marks  have  been  regis- 
tered, or,  if  so,  to  whom,  or  for  what  goods;  nor  can  it  give  advice  as 

[749]         15 


10        [750]  Regkstkation  of  Tuadio-Mahks 

to  the  nature  and  extent  of  the  protection  afforded  by  the  law,  or  act 
as  its  expounder,  except  as  questions  may  arise  upon  applications 
regularly  filed. 

10.  Express,  freight,  postage,  and  all  other  charges  on  matter  sent 
to  the  Patent  Office  must  be  prepaid  in  full;  otherwise  it  will  not  be 
received. 

ATTORNEYS 

11.  The  owner  of  a  trade-mark  may  prosecute  his  own  application 
for  registration  of  such  trade-mark,  but  he  is  advised,  unless  familiar 
with  such  matters,  to  employ  a  competent  attorney.  The  office  can  not 
aid  in  the  selection  of  an  attorney. 

A  register  of  attorneys  is  kept  in  the  Patent  Office,  on  which  is  entered 
the  names  of  all  persons  entitled  to  represent  applicants  before  the  Pat- 
ent Office  in  the  prosecution  of  applications  for  patents,  and  any  regis- 
tered attorney  will  be  recognized  in  the  prosecution  of  applications  for 
registration  of  trade-marks. 

Registration  of  an  attorney  merely  for  the  prosecution  of  an  applica- 
tion for  registration  of  a  trade-mark  will  not  be  required,  but  in  the 
absence  of  registration  rc»cognition  will  be  limited  to  each  case.  The 
commissioner  reserves  the  right  to  decline  to  recognize  any  attorney, 
agent,  or  other  person  authorized  to  be  recognized  by  the  preceding 
provisions  of  this  rule. 

12.  Before  any  attorney,  original  or  associate,  will  be  allowed  to 
inspect  papers  or  take  action  of  any  kind,  his  power  of  attorney  must 
be  filed.  General  powers  given  by  a  principal  to  an  associate  can  not 
be  considered.  In  each  application  the  written  authorization  must  be 
filed.  A  power  of  attorney  purporting  to  have  been  given  to  a  firm  or 
copartnership  will  not  be  recognized,  either  in  favor  of  the  firm  or  of 
any  of  its  members,  unless  all  its  members  shall  be  named  in  such  power 
of  attorney. 

13.  Substitution  or  association  may  be  made  by  an  attorney  upon 
the  written  authorization  of  his  principal;  but  such  authorization  will 
not  empower  the  second  attorney  to  appoint  a  third.  • 

14.  Powers  of  attorney  may  be  revoked  at  any  stage  in  the  proceed- 
ings of  a  case  upon  application  to  and  appro v\al  by  the  commissioner; 
and,  when  so  revoked,  the  office  will  communicate  directly  with  the 
applicant,  or  such  other  attorney  as  he  may  appoint.  A  power  of  at- 
torney appointing  a  second  principal  attorney  will  not  be  entered  unless 
such  power  of  attorney  specifically  revokes  that  given  the  principal 
attorney  of  record  (rule  8).  An  attorney  will  be  promptly  notified  by 
the  docket  clerk  of  the  revocation  of  his  power  of  attorney. 

15.  For  gross  misconduct  the  commissioner  may  refuse  to  recognize 
any  person  as  an  attorney,  either  generally  or  in  any  particular  case; 
but  the  reasons  for  such  refusal  will  be  duly  recorded  and  be  subject 
to  the  approval  of  the  Secretary  of  the  Interior. 

WHO    MAY   REGISTER   A   TRADE-MARK 

16.  A  trade-mark  may  be  registered  by  any  person,  firm,  corpo- 

ration, or  association  domiciled  within  the  territory 
1905? sec.  1.'^*''  ^°'    of  the  United  States,  or  residing  in  or  located  in  any 

foreign  country  which,  by  treaty,  convention,  or  law, 
affords  similar  privileges  to  the  citizens  of  the  United  States,  and  who  is 


Registration  of  Trade-Marks  [751]        17 

the  owner  of  such  trade-mark,  and  uses  the  same  in  commerce  with 
foreign  nations,  or  among  the  several  States,  or  with  Indian  tribes, 
upon  payment  of  the  fee  required  by  law  and  other  due  proceedings  had. 
(See  rules  17  and  20.) 

17.  Except  as  provided  by  section  3  of  the  act  of  May  4,  1906,  no 

trade-mark  will  be  registered  to  an  applicant  residing 
i905?secs!  iS!an/4!  or  locatcd  in  a  foreign  country  unless  such  country, 
i906'8ec°3  ^^'^^  ^'  ^y  treaty,  convention,  or  law,  afford  similar  privi- 
leges to  the  citizens  of  the  United  States,  nor  unless 
the  trade-mark  has  been  registered  by  the  applicant  in  the  foreign 
country  in  which  he  resides  or  is  located,  nor  until  such  applicant  has 
filed  in  this  office  a  certified  copy  of  the  certificate  of  registration  of 
his  trade-mark  in  the  country  where  he  resides  or  is  located.  In  such 
cases  it  is  not  necessary  to  state  in  the  application  that  the  trade-mark 
has  been  used  in  commerce  with  the  United  States  or  among  the  several 
States  thereof. 

18.  The  owner  of  a  trade-mark,  residing  or  located  in  a  foreign  coun- 

try and  who  shall  have  a  manufacturing  establish- 
i906?8ec?3.  ^^^^  *'  ment  within  the  territory  of  the  United  States,  may 

register  a  trade-mark  used  on  the  products  of  such 
establishment  upon  complying  with  the  provisions  of  the  act  of  Febru- 
ary 20,  1905,  as  prescribed  for  owners  of  trade-marks  domiciled  within 
the  territory  of  the  United  States. 

WHAT   MAY  BE   REGISTERED   AS  A  TRADE-MARK 

19.  No  trade-mark  will  be  registered  to  an  owner  domiciled  within 

the  territory  of  the  United  States  unless  it  shall  be 
i905*8era.  1, 5?and2i.  niade  to  appear  that  the  same  is  used  as  such  by  said 
i909*8ec'^i  ^^^'  ^^'  owner  in  commerce  among  the  several  States,  or  be- 
tween the  United  States  and  some  foreign  nation  or 
Indian  tribe;  no  trade-mark,  except  as  provided  by  section  3  of  the 
act  of  May  4,  1906,  will  be  registered  to  an  owner  residing  in  or  located 
in  a  foreign  country  unless  said  country,  by  treaty,  convention,  or  law, 
affords  similar  privileges  to  the  citizens  of  the  United  States;  no  trade- 
mark will  be  registered  which  consists  of  or  comprises  immoral  or  scan- 
dalous matter,  or  which  consists  of  or  comprises  the  flag  or  coat  of  arms 
or  other  insignia  of  the  United  States,  or  any  simulation  thereof,  or  of 
any  State  or  municipality,  or  of  any  foreign  nation,  or  which  consists 
of  or  comprises  any  design  or  picture  that  has  been  adopted  by  any  fra- 
ternal society  as  its  emblem,  unless  it  shall  be  shown  to  the  satisfaction 
of  the  Commissioner  of  Patents  that  the  mark  was  adopted  and  used  as 
a  trade-mark  by  the  applicant  or  applicant's  predecessors,  from  whom 
title  is  derived,  at  a  date  prior  to  the  date  of  its  adoption  by  such  fra- 
ternal society  as  its  emblem,  or  which  trade-mark  is  identical  with  a 
registered  or  known  trade-mark  owned  and  in  use  by  another,  and  ap- 
propriated to  merchandise  of  the  same  descriptive  properties,  or  which 
so  nearly  resembles  a  registered  or  known  trade-mark  owned  and  in 
use  by  another,  and  appropriated  to  merchandise  of  the  same  descrip- 
tive properties  as  to  be  likely  to  cause  confusion  or  mistake  in  the  mind 
of  the  public,  or  to  deceive  purchasers,  or  which  consists  merely  in  the 
name  of  an  individual,  firm,  corporation,  or  association,  not  written, 
printed,  impressed,  or  woven  in  some  particular  or  distinctive  manner 


18        [752]  Registration  of  Trade-Marks 

or  in  association  with  a  portrait  of  the  individual,  or  merely  in  words  or 
devices  which  are  descriptive  of  the  goods  with  which  they  are  used,  or 
of  the  character  or  quality  of  such  goods,  or  merely  a  geographical  name 
or  term;  no  portrait  of  a  living  individual  will  be  registered  as  a  trade- 
mark, except  by  the  consent  of  such  individual  evidenced  by  an  instru- 
ment in  writing;  and  no  trade-mark  will  be  registered  which  is  used 
in  unlawful  business,  or  upon  any  article  injurious  in  itself,  or  which 
has  been  used  with  the  design  of  deceiving  the  pubHc  in  the  purchase 
of  merchandise,  or  which  has  been  abandoned. 

20.  Any  mark,  used  in  commerce  with  foreign  nations  or  among 
Act   of   Feb.  20,  the  scvcral  States  or  with  Indian  tribes,  may  be  regis- 

^^Act*'^of"'"Feb.  18,  tcrcd  if  it  has  been  in  actual  and  exclusive  use  as  a 
1311-  trade-mark  of  the  applicant,  or  his  predecessors  from 

whom  he  derived  title,  for  10  j'^ears  next  preceding  February  20,  1905. 
(See  rule  32.) 

THE  APPLICATION 

21.  An  application  for  the  registration  of  a  trade-mark  must  be 
Act   of  Feb.   20,  uiadc  to  the  Commissioner  of  Patents  and  must  be 

1905,  sec.  1.  signed  by  the  applicant. 

22.  A  complete  application  comprises: 

(a)  A  petition,  requesting  registration,  signed  by 
loos.'sec.S.^*''''  ^"'  the  applicant.  (See  Form  1,  p.  33.) 
1909  ^ec^  1  ^'^'''  ^^'  (^)  ^  statement  specifying  the  name,  domicile, 
location,  and  citizenship  of  the  party  applying,  and  if 
the  applicant  be  a  corporation  or  association,  the  State  or  nation  under 
the  laws  of  which  organized;  the  class  of  merchandise  (according  to  the 
official  classification),  and  the  particular  description  of  goods  comprised 
in  such  class  upon  which  the  trade-mark  has  actually  been  used;  a  state- 
ment of  the  mode  in  which  the  same  is  applied  and  affixed  to  the  goods, 
and  the  length  of  time  during  which  the  trade-mark  has  been  used  upon 
the  goods  specified.  A  description  of  the  trade-mark  itself  shall  be  in- 
cluded, if  desired  by  the  applicant  or  required  by  the  commissioner, 
provided  such  description  is  of  a  character  to  meet  the  approval  of  the 
commissioner.  (See  sec.  29  of  the  act  of  February  20,  1905,  and  Forms 
2,  4,  6,  and  10,  pp.  31,  32,  33,  and  36.) 

(c)  A  declaration  complying  with  section  2  of  the  act  of  February 
20,  1905,  as  amended  by  the  act  of  February  18,  1909.  (See  Forms  3,  5, 
7,  8,  9,  and  11,  pp.  31,  33,  34,  35,  and  36.) 

(d)  A  drawing  of  the  trade-mark,  signed  by  the  applicant,  or  his  at- 
torney, which  shall  be  a  facsimile  of  the  same  as  actually  used  upon 
the  goods.  (See  rules  36  and  37  and  specimen  drawing  between  pp.  40 
and  41.) 

(e)  Five  specimens  (or  facsimiles,  when,  from  the  mode  of  applying 
or  affixing  the  trade-mark  to  the  goods,  specimens  can  not  he  furnished) 
of  the  trade-mark  as  actually  used  upon  the  goods. 

(/)  A  fee  of  $10. 

23.  The  petition,  the  statement,  and  the  declaration  must  be  in  the 
English  language  and  written  on  one  side  of  the  paper  only. 

24.  The  name  of  the  applicant  will  appear  in  the  certificate  of  regis- 
tration precisely  as  it  is  signed  to  the  statement  of  the  application, 
and,  therefore,  the  signature  to  the  statement  must  be  the  correct  sig- 
nature of  the  applicant,  and  the  name  of  the  applicant  wherever  it  ap- 


Registration  of  Trade-Marks  [753]         19 

poars  in  the  papers  of  the  application  will  be  made  to  agree  with  the  name 
as  signed  to  the  statement. 

25.  No  information  will  be  given,  without  authority  of  the  applicant, 
respecting  the  filing  of  an  application  for  the  registration  of  a  trade- 
mark by  any  person,  or  the  subject-matter  thereof,  unless  it  shall,  in 
the  opinion  of  the  commissioner,  be  necessary  to  the  proper  conduct 
of  business  before  the  office. 

26.  All  applications  for  registration  pending  in  the  Patent  Office 

at  the  time  of  the  passage  of  the  act  of  February  20, 
1905*8608.  u^&nd  24!  1905,  may  be  amended  with  a  view  to  bringing  them 

and  the  certificates  issued  under  such  applications 
under  the  provisions  of  said  act,  and  the  prosecution  of  such  appli- 
cations may  be  proceeded  with  under  its  provisions  without  the  payment 
of  further  fee.  When  such  an  application  is  amended  to  bring  it  under 
the  act  of  February  20,  1905,  it  will  be  given  a  serial  number  and  a 
date  of  filing  under  said  act. 

A  trade-mark,  registered  under  the  act  of  March  3,  1881,  may  be 
registered  under  the  act  of  February  20,  1905,  but  the  application  for 
such  registration  will  be  subject  to  examination  in  the  same  manner 
as  other  applications  filed  under  said  act  of  February  20,  1905. 

27.  An  application  for  registration  of  a  trade-mark,  filed  in  this 

country  by  any  person  who  has  previously  regularly 
1905*860.^  4.^^'^'  ^°'  filsd  in  any  foreign  country  which,  by  treaty,  conven- 
tion, or  law,  affords  similar  privileges  to  the  citizens 
of  the  United  States  an  application  for  registration  of  the  same  trade- 
mark, shall  be  accorded  the  same  force  and  effect  as  would  be  accorded 
to  the  same  application  if  filed  in  this  country  on  the  date  on  which 
application  for  registration  of  the  same  trade-mark  was  first  filed  in 
such  foreign  country:  Provided,  That  such  application  be  filed  in  this 
country  within  four  months  from  the  date  on  which  the  application  was 
first  filed  in  such  foreign  country. 

28.  Every  applicant  for  registration  of  a  trade-mark,  or  for  renewal 

of  registration  of  a  trade-mark,  who  is  not  domiciled 
i905*sec!3.^^'''   ^^'  withiu  the  United  States,  shall,  before  the  issuance  of 

the  certificate  of  registration,  designate,  by  a  notice  in 
writing,  filed  in  the  Patent  Office,  some  person  residing  within  the 
United  States  on  whom  process  or  notice  of  proceedings  affecting  the 
right  of  ownership  of  the  trade-mark  of  which  such  applicant  may 
claim  to  be  the  owner  may  be  served.  This  notice  shall  be  indorsed 
upon  the  file  wrapper  of  the  application. 

29.  In  proceedings  relating  to  an  application,  or  to  a  registration 

under  the  act  of  February  20,  1905,  it  shall  be  deemed 
i905*8ea  3.^^^"   ^°'  sufficient  to  serve  notice  upon   the  applicant,   regis- 
trant, or  representative,  by  leaving  a  copy  of  the  process 
or  notice  of  proceedings  addressed  to  him  at  the  last  address  of  which 
the  Commissioner  of  Patents  has  been  notified. 

30.  A  trade-mark  may,  at  the  option  of  the  applicant,  be  registered 

on  a  single  application,  for  any  or  all  goods  comprised 
1906*860.^2.^^^^   *'  i^  ^  single  class  of  merchandise,  provided  the  particular 

description  of  goods  be  stated,  and  provided  that  the 
mark  has  been  actually  used  upon  all  of  the  goods  specified.  (See  classi- 
fication of  merchandise,  p.  41.) 


20  [754]  ReGISTKATION    of   THADE-lVlAKKrt 

31.  The  application  must  be  accompanied  by  a  written  declaration, 

verified  by  the  applicant,  or  by  a  member  of  the  firm, 
1905  *8oc'  2.^*''''  ^^'  or  by  an  officer  of  the  corporation  or  association  apply- 
1009^00^2  ^^^'   ^^'  "^S>  to  the  effect  that  he  believes  himself,  or  the  firm, 

corporation,  or  association  in  whose  behalf  he  makes 
the  declaration,  to  be  the  owner  of  the  trade-mark  sought  to  be  regis- 
tered, and  that  no  other  person,  firm,  corporation,  or  association,  to 
the  best  of  his  knowledge  and  belief,  has  the  right  to  use  the  trade- 
mark in  the  United  States,  either  in  the  identical  form  or  any  such 
near  resemblance  thereto  as  might  be  calculated  to  deceive;  that  such 
trade-mark  is  used  in  commerce  among  the  several  States,  or  with 
foreign  nations,  or  with  Indian  tribes;  that  the  description  and  drawing 
truly  represent  the  trade-mark  sought  to  be  registered;  that  the  speci- 
mens (or  facsimiles)  show  the  mark  as  actually  used  upon  the  goods; 
and  that  the  facts  set  forth  in  the  statement  are  true.  (See  rule  17  and 
Forms  3,  5,  7,  8,  9,  and  11,  pp.  34,  35,  36,  37,  and  38.) 

32.  Where  application  is  made  under  section  5  of  the  act  of  Feb- 

ruary  20,  1905,  on  the  ground  that  the  mark  has  been 
'^  °  ^  ■  '  in  actual  and  exclusive  use  as  a  trade-mark  by  the 
applicant,  or  his  predecessors  from  whom  he  derived  title,  for  10  years 
next  preceding  February  20,  1905,  the  applicant  shall,  in  addition  to 
the  requirements  of  section  2  of  said  act,  make  oath  to  such  actual 
use  of  the  mark  as  a  trade-mark  by  himself  or  his  predecessors,  or  by 
those  from  whom  title  to  the  same  is  derived,  for  the  period  specified, 
and  that,  to  the  best  of  his  knowledge  and  belief,  such  use  has  been 
exclusive.    (See  Form  8,  p.  36.) 

33.  If  the  applicant  resides  or  is  located  in  a  foreign  country,  the 

declaration  required,  unless  the  application  be  pre- 
i905*8ec.^2.^^^'   ^°'  sented  under  the  provisions  of  section  3  of  the  act  of 

May  4,  1906,  shall  also  set  forth  that  the  trade-mark 
has  been  registered  by  the  applicant,  or  that  an  application  for  the 
registration  thereof  has  been  filed  by  him  in  the  foreign  country  in  which 
he  resides  or  is  located,  and  shall  give  the  date  of  such  registration,  or 
of  the  application  therefor,  as  the  case  may  be.  In  such  cases  it  shall 
not  be  necessary  to  state  that  the  mark  has  been  used  in  commerce 
with  the  United  States  or  among  the  States  thereof. 

If  the  appUcation  be  presented  under  the  provisions  of  section  3  of 

the  act  of  May  4,  1906,  the  declaration,  in  addition 
i906*8ec"/3.^^^   *•  to  the  requirements  of  rule  31,  must  state  that  the 

applicant  has  a  manufacturing  establishment  within 
the  territory  of  the  United  States  and  that  the  goods  upon  which  the 
trade-mark  is  used  are  the  product  of  such  establishment. 

34.  The  declaration  may  be  made  before  any  person  within  the 

United  States  authorized  by  law  to  administer  oaths, 
iQn^*<»^^9^'^''"    ^°' or,  when  the  applicant  resides  in  a  foreign  country, 

before  any  mmister,  charge  d  affaires,  consul,  or  com- 
mercial agent  holding  commission  under  the  Government  of  the  United 
States,  or  before  any  notary  public,  judge,  or  magistrate  having  an 
official  seal  and  authorized  to  administer  oaths  in  the  foreign  country  in 
which  the  applicant  may  be,  whose  authority  shall  be  proved  by  the 
certificate  of  a  diplomatic  or  consular  officer  of  the  United  States,  the 
declaration  being  attested  in  all  cases,  in  this  and  other  countries,  by 


Registration  of  Trade-Marks  [755]        21 

the  proper  official  seal  of  the  officer  before  whom  the  same  is  made,  ex- 
cept that  no  acknowledgment  may  be  taken  before  any  attorney  ap- 
pearing in  the  case.  When  the  person  before  whom  the  declaration  is 
made  is  not  provided  with  a  seal,  his  official  character  shall  be  established 
by  competent  evidence,  as  by  a  certificate  of  a  clerk  of  a  court  of  record, 
or  other  proper  officer  having  a  seal. 

35.  Amendment  of  the  declaration  will  not  be  permitted.  If  that 
filed  with  the  application  be  faulty  or  defective,  a  substitute  declaration 
must  be  filed. 

DRAWING 

36.  (1)  The  drawing  must  be  made  upon  pure  white  paper  of  a 
thickness  corresponding  to  two-sheet  Bristol  board.  The  surface  of 
the  paper  must  be  calendered  and  smooth.  India  ink  alone  must  be 
used,  to  secure  perfectly  black  and  solid  lines. 

(2)  The  size  of  a  sheet  on  which  a  drawing  is  made  must  be  exactly 
10  by  15  inches.  One  inch  from  its  edges  a  single  marginal  line  is  to 
be  drawn,  leaving  the  ''sight"  precisely  8  by  13  inches.  Within  this 
margin  all  work  and  signatures  must  be  included.  One  of  the  shorter 
sides  of  the  sheet  is  regarded  as  its  top,  and,  measuring  downwardly 
from  the  marginal  line,  a  space  of  not  less  than  134  inches  is  to  be  left 
blank  for  the  heading  of  title,  name,  number,  and  date.  (See  specimen 
drawing  between  pp.  38  and  39.) 

(3)  All  drawings  must  be  made  with  the  pen  only.  Every  line  and 
letter,  signatures  included,  must  be  absolutely  black.  This  direction 
applies  to  all  lines,  however  fine,  and  to  shading.  All  lines  must  be 
clean,  sharp,  and  solid,  and  they  must  not  be  too  fine  or  crowded.  Sur- 
face shading,  when  used,  should  be  open. 

(4)  The  name  of  the  proprietor  of  the  trade-mark,  signed  by  him- 
Act    of  Feb.  20,  Self  Or  by  his  attorney  of  record,  must  be  placed  at  the 

^^A^t^^'f^Feb.  18,  lower  right-hand  corner  of  the  sheet  within  the  mar- 
1909,  sec.  1.  ginal  lines,  but  in  no  instance  should  it  encroach  upon 

the  drawing. 

(5)  When  the  view  is  longer  than  the  width  of  the  sheet,  the  sheet 
should  be  turned  on  its  side  and  the  heading  should  be  placed  at  the 
right  and  the  signature  at  the  left,  occupying  the  same  space  and  posi- 
tion as  in  an  upright  view  and  being  horizontal  when  the  sheet  is  held 
in  an  upright  position. 

(6)  Drawings  transmitted  to  the  office  should  be  sent  flat,  protected 
by  a  sheet  of  heavy  binder's  board,  or  should  be  rolled  for  transmission 
in  a  suitable  mailing  tube.    They  should  never  be  folded. 

(7)  An  agent's  or  attorney's  stamp,  or  advertisement,  or  written 
address  will  not  be  permitted  upon  the  face  of  a  drawing,  within  or 
without  the  marginal  line. 

37.  The  office,  at  the  request  of  applicants,  will  furnish  the  drawings 
at  cost. 

EXAMINATION   OF  APPLICATIONS 

38.  All  complete  applications  for  registration  are  considered,  in  the 

first  instance,  by  the  examiner  in  charge  of  trade- 
i905,'^8ec/6.^^''"  ^°'  marks.     Whenever,  on  examination  of  an  application, 

registration  is  refused  for  any  reason  whatever,  the 
applicant  will  be  notified  thereof.     The  reasons  for  such  refusal  will 


22        [756]  Registration  of  Trade-Marks 

be  stated,  and  such  information  and  roferencos  will  l)o  given  as  may 
be  useful  in  aiding  the  applicant  to  judge  of  the  propriety  of  further 
prosecuting  his  application. 

39.  The  examination  of  an  application  and  the  action  thereon  will 
be  directed  throughout  to  the  merits,  but  in  each  letter  the  examiner 
shall  state  or  refer  to  all  his  objections. 

40.  If,  on  examination  of  an  application  for  the  registration  of  a 

trade-mark,  it  shall  appear  that  the  applicant  is  en- 

i905*ke°^6.'^'''''   ^"'  titled   to   have   his   trade-mark   registered   under   the 

provisions  of  the  law,  the  mark  will  be  published  in 

the  Official  Gazette  at  least  once.    Such  publication  shall  be  at  least 

thirty  days  prior  to  the  date  of  registration. 

If  no  notice  of  opposition  be  filed  within  thirt}"  days  after  such  pub- 
lication, the  applicant  or  his  attorney  will  be  duly  notified  of  the  al- 
lowance of  his  application,  and  a  certificate  of  registration  will  be  issued 
as  provided  in  rule  58. 

The  weekly  issue  closes  on  Thursday,  and  the  certificates  of  regis- 
tration of  that  issue  bear  date  as  of  the  fourth  Tuesday  thereafter. 

AMENDMENTS 

41.  The  statement  may  be  amended  to  correct  informalities,  or  to 
avoid  objections  made  by  the  office,  or  for  other  reasons  arising  in  the 
course  of  examination,  but  no  amendments  to  the  description  or  draw- 
ing of  the  trade-mark  will  be  permitted  unless  warranted  by  some- 
thing in  the  specimens  (or  facsimiles)  as  originall}^  filed, 

42.  In  every  amendment  the  exact  word  or  words  to  be  stricken 
out  or  inserted  in  the  statement  must  be  specified  and  the  precise  point 
indicated  where  the  erasure  or  insertion  is  to  be  made.  All  such  amend- 
ments must  be  on  sheets  of  paper  separate  from  the  papers  previously 
filed,  and  written  on  but  one  side  of  the  paper. 

Erasures,  additions,  insertions,  or  mutilations  of  the  papers  and 
records  must  not  be  made  by  the  applicant  or  attorney. 

43.  When  an  amendatory  clause  is  amended,  it  must  be  wholly  re- 
written, so  that  no  interlineation  or  erasure  shall  appear  in  the  clause, 
as  finally  amended,  when  the  application  is  passed  to  issue.  If  the 
number  or  nature  of  the  amendments  shall  render  it  otherwise  difficult 
to  consider  the  case,  or  to  arrange  the  papers  for  printing  or  copying, 
the  examiner  may  require  the  entire  statement  to  be  rewritten. 

44.  After  allowance,  the  examiner  will  exercise  jurisdiction  over  an 
application  only  by  special  authority  from  the  commissioner. 

Amendments  may  be  made  after  the  allowance  of  an  application,  if 
the  case  has  not  been  printed,  on  the  recommendation  of  the  examiner, 
approved  by  the  commissioner,  without  withdrawing  the  case  from 
issue. 

45.  After  the  completion  of  the  application,  the  oflSce  will  not  return 
the  papers  for  any  purpose  whatever.  If  the  applicant  has  not  pre- 
served copies  of  the  papers  which  he  wishes  to  amend,  the  oflfice  will 
furnish  them  on  the  usual  terms. 

45a.  If  an  applicant  fail  to  prosecute  his  application  within  one 
year  prior  to  November  1,  1911,  or  for  one  year  after  the  date  when 
the  last  official  notice  of  any  action  by  the  office  was  mailed  to  him,  the 
application  will  be  held  to  be  abandoned,  as  set  forth  in  rule  57a. 


Registration  of  Trade-Marks  [757]        23 

45b.  Whenever  action  upon  an  application  is  suspended  upon  re- 
quest of  an  applicant  and  whenever  an  applicant  has  been  called  upon 
to  put  his  application  in  condition  for  interference,  the  period  of  one 
year  running  against  such  application  shall  be  considered  as  beginning 
at  the  date  of  the  last  official  action  preceding  such  actions. 

45c.  Acknowledgment  of  the  filing  of  an  application  is  an  official 
action.  Suspensions  will  only  be  granted  for  good  and  sufficient  cause 
and  for  a  reasonable  time  specified. 

45d.  Only  one  suspension  will  be  granted  by  the  examiner  of  trade- 
marks.   Any  further  suspension  must  be  approved  by  the  commissioner. 

INTERFERENCE,   OPPOSITION,   AND    CANCELLATION 

46.  Whenever  application  is  made  for  the  registration  of  a  trade- 
mark which  is  substantially  identical  with  a  trade-mark  appropriated 
to  goods  of  the  same  descriptive  properties,  for  which  a  certificate  of 
registration  has  been  previously  issued  to  another,  or  for  registration 
of  which  another  had  previously  made  application,  or  which  so  nearly 
resembles  such  trade-mark,  or  a  known  trade-mark  owned  and  used 
by  another,  as,  in  the  opinion  of  the  commissioner,  to  be  likely  to  be 
mistaken  therefor  by  the  public,  an  interference  will  be  declared. 

The  practice  in  trade-mark  interferences  will  follow,  as  nearly  as 
practicable,  the  practice  in  interferences  between  applications  for 
patents. 

47.  Before  the  declaration  of  interference,  all  preliminary  questions 
must  have  been  settled  by  the  examiner  in  charge  of  trade-marks,  and 
the  trade-mark  which  is  to  form  the  subject-matter  of  the  contro- 
versy must  have  been  decided  to  be  registrable,  and  must  have 
been  published  at  least  once  in  the  Official  Gazette  of  the  Patent 
Office. 

Whenever  two  or  more  applicants  are  found  to  be  claiming  substan- 
tially the  same  registrable  trade-mark,  and  the  application  of  one  of 
the  applicants  is  ready  for  publication,  the  examiner  in  charge  of  trade- 
marks may  require  the  other  applicants  to  put  their  apphcations  in 
condition  for  publication  within  a  time  specified,  in  order  that  an  inter- 
ference may  be  declared.  If  any  party  fail  to  put  his  application  in 
condition  for  publication  within  the  time  specified,  the  declaration  of 
interference  will  not  be  delayed,  but  after  final  judgment  the  application 
of  such  party  will  be  held  for  revision  and  restriction,  subject  to  inter- 
ference with  other  applications  or  registered  trade-marks. 

48.  The  examiner  in  charge  of  interferences  may,  either  before  or  in 
his  final  decision  in  an  interference  or  opposition,  direct  the  atten- 
tion of  the  commissioner  to  any  matter  which  may  have  come  to  his 
notice  which  can  not  be  acted  upon  by  him,  which  in  his  opinion  pre- 
cludes a  proper  determination  of  questions  raised  by  the  proceeding, 
or  which  amounts  to  a  statutory  bar  to  registration  of  the  mark  to 
any  or  all  of  the  parties.  The  commissioner  may,  before  judgment, 
suspend  the  interference  or  opposition  and  remand  the  same  to  the 
examiner  in  charge  of  trade-marks  for  his  consideration  of  the  matters 
to  which  attention  has  been  directed.  If  the  case  be  not  so  remanded, 
the  examiner  in  charge  of  trade-marks  will,  after  judgment,  consider 
any  matter  affecting  right  to  registration  which  may  have  been  brought 


24        [758]  Registration  of  Trade-Marks 

to  his  attention,  unless  the  same  shall  have  been  previously  disposed 
of  in  the  proceeding.  From  the  decision  of  the  examiner  in  charge  of 
trade-marks  appeals  may  be  taken  as  in  other  cases. 

49.  Motions  to  dissolve  an  interference  upon  the  ground  that  no 
interference  in  fact  exists,  or  that  there  has  been  such  irregularity  in 
declaring  the  same  as  will  preclude  a  proper  determination  of  the  ques- 
tion of  the  right  of  registration,  or  which  deny  the  registrability  of  an 
applicant's  mark,  should  contain  a  full  statement  of  the  grounds  relied 
upon,  and  should,  if  possible,  be  made  not  later  than  the  thirtieth 
day  after  the  notices  of  the  interference  have  been  mailed.  Such  mo- 
tions and  all  motions  of  a  similar  character,  if  in  the  opinion  of  the 
Commissioner  they  be  in  proper  form,  will  be  heard  and  determined  by 
the  examiner  of  trade-marks,  due  notice  of  the  day  of  hearing  being 
given  by  the  office  to  all  parties.  If  in  the  opinion  of  the  Commissioner 
the  motion  be  not  in  proper  form,  or  if  it  be  not  brought  within  the 
time  specified  and  no  satisfactory  reason  be  given  for  the  delay,  it  will 
not  be  considered  and  the  parties  will  be  so  notified.  Setting  a  motion 
for  hearing  by  the  examiner  of  trade-marks  will  act  as  a  stay  of  pro- 
ceedings pending  the  determination  of  the  motion. 

When  the  motion  has  been  decided  by  the  examiner  in  charge  of 
trade-marks,  the  files  and  papers,  with  his  decision,  will  be  sent  at 
once  to  the  docket  clerk. 

Motions  to  shift  the  burden  of  proof  should  be  made  before,  and 
will  be  determined  by,  the  examiner  in  charge  of  interferences.  No 
appeal  from  the  decision  on  such  motion  will  be  entertained,  but  the 
matter  may  be  reviewed  on  appeal  from  the  final  decision  upon  the 
question  of  priority. 

50.  The  decision  of  the  examiner  in  charge  of  trade-marks,  upon  a 
motion  for  dissolution,  will  be  binding  upon  the  examiner  in  charge  of 
interferences  unless  reversed  or  modified  on  appeal.  Unless  appeal 
be  taken  within  the  time  limited  for  appeal,  the  examiner  in  charge 
of  trade-marks  will  return  the  files  and  papers  with  his  decision  to  the 
examiner  in  charge  of  interferences. 

51.  Any  person  who  believes  he  would  be  damaged  by  the  registra- 

tion of  a  mark  may  oppose  the  same  by  filing  a  written 
i905%ec3. 6  and  14. '  notice  of  oppositiou,  Stating  the  grounds  therefor, 
i9OT'sec^2  ^^^^'   ^'  within   30   days   after    the    publication   of    the  mark 

sought  to  be  registered,  which  notice  of  opposition 
shall  be  accompanied  by  the  fee  required  by  law  and  shall  be  verified 
by  the  person  filing  the  same  before  one  of  the  officers  mentioned  in 
section  2  of  the  act  of  February  20,  1905.  An  opposition  may  be  filed 
by  a  duly  authorized  attorney,  but  such  opposition  shall  be  null  and 
void  unless  duly  verified  by  the  opposer,  within  a  reasonable  time  after 
such  filing.  A  duplicate  copy  of  the  notice  of  opposition  must  be  filed, 
either  with  the  notice  of  opposition  or  within  a  reasonable  time  after 
the  filing  of  the  same. 

52.  Any  person,  deeming  himself  to  be  injured  by  the  registration 

of  a  trade-mark  in  the  Patent  Office,  may,  at  an}'  time, 
loosfsec.^a!^''^"  ^°'  make  application   (see  Form   13,  p.  37)  to  the  com- 
missioner   to    cancel    the    registration    thereof.      Such 
application  shall  be  filed  in  duplicate,  shall  state  the  grounds  for  can- 
cellation, and  shall  be  verified  by  the  person  filing  the  same,  before 


Registration  of  Trade-Marks  [759]        25 

one  of  the  officers  mentioned  in  section  2  of  the  act  of  February  20, 
1905.    (See  rule  34.) 

53.  If  it  shall  appear,  after  a  hearing  before  the  examiner  of  in- 

terferences, that  the  registrant  was  not  entitled  to  the 
i905*8ec!  il^^***    ^^'  US6   of  ^he  mark   at  the  date  of  his  application  for 

registration  thereof,  or  that  the  mark  is  not  used  by 
the  registrant,  or  has  been  abandoned,  and  the  examiner  in  charge 
of  interferences  shall  so  decide,  the  commissioner  shall  cancel  the 
registration  of  the  mark,  unless  appeal  be  taken  within  the  limit 
fixed. 

54.  In  cases  of  opposition,  and  of  applications  for  cancellation,  the 
examiner  in  charge  of  trade-marks  shall  forward  the  files  and  papers 
to  the  examiner  in  charge  of  interferences,  who  shall  give  notice  thereof 
to  the  applicant  or  registrant.  The  applicant  or  registrant  must  make 
answer  at  such  time,  not  less  than  30  days  from  the  date  of  the  notice, 
as  shall  be  fixed  by  the  examiner  in  charge  of  interferences. 

55.  The  proceedings,  on  oppositions,  and  on  applications  for  can- 
cellation, shall  follow,  as  nearly  as  practicable,  the  practice  in  inter- 
ferences between  applications  for  patents. 

APPEALS 

56.  Every  applicant  whose  mark  has  been  twice  refused  registration 
by  the  examiner  of  trade-marks  for  the  same  reasons,  upon  grounds 
involving  the  merits  of  the  application,  may  appeal  to  the  commissioner 
in  person  upon  payment  of  the  fee  required  by  law.  Such  refusal  may 
be  considered  by  the  examiner  of  trade-marks  as  final. 

There  must  have  been  two  refusals  to  register  the  mark  as  originally 
filed,  or,  if  amended  in  matter  of  substance,  the  amended  mark,  and, 
except  in  cases  of  division,  all  preliminary  and  intermediate  questions 
relating  to  matters  not  affecting  the  merits  of  the  application  must 
have  been  settled  before  the  case  can  be  appealed  to  the  com- 
missioner. 

Upon  receiving  a  petition  stating  concisely  and  clearly  any  proper 
question  which  has  been  acted  upon  by  the  examiner  in  charge  of  trade- 
marks and  which  does  not  involve  the  merits  of  the  trade-mark  claimed, 
the  refusal  of  registration  of  the  trade-mark,  or  a  requirement  for  di- 
vision, and  also  stating  the  facts  involved  and  the  point  or  points  to  be 
reviewed,  an  order  will  be  made  fixing  a  time  for  hearing  such  petition 
by  the  commissioner,  and  directing  the  examiner  to  furnish  a  written 
statement  of  the  grounds  of  his  decision  upon  the  matters  averred  in 
such  petition  within  five  days  after  being  notified  of  the  order  fixing 
the  day  of  hearing.  The  examiner  shall,  at  the  time  of  making  such 
statement,  furnish  a  copy  thereof  to  the  petitioner.  No  fee  is  required 
for  such  a  petition. 

57.  From  the  adverse  decision  of  the  Commissioner  of  Patents  upon 

the  right  of  an  applicant  to  register  a  trade-mark,  or 
i905?aeo.^  9.^^^'  ^^'  f rom  the  decision  of  the  commissioner  in  cases  of  inter- 
ference, opposition,  or  cancellation,  an  appeal  may  be 
taken  to  the  court  of  appeals  of  the  District  of  Columbia  in  the  manner 
prescribed  by  the  rules  of  that  court. 


20        [700]  Registration  of  Trade-Marks 

ABANDONED   APPLICATIONS 

57a.  An  abandoned  trade-mark  application  is  one  which  has  not 
been  prosecuted  within  one  year  prior  to  November  1,  1911,  or  com- 
pleted and  prepared  for  examination  within  one  year  after  the  filing 
of  the  petition,  or  which  the  applicant  has  failed  to  prosecute  within 
one  year  after  any  action  therein  of  which  notice  has  been  duly  given 
or  which  the  applicant  has  expressly  abandoned  by  filing  in  the  office  a 
written  declaration  of  abandonment,  signed  by  himself  and  assignee, 
if  any,  identifying  his  application  by  serial  number  and  date  of  filing. 

57b.  Prosecution  of  an  application  to  save  it  from  abandonment  must 
include  such  proper  action  as  the  condition  of  the  case  may  require. 
The  admission  of  an  amendment  not  responsive  to  the  last  official  action, 
or  refusal  to  admit  the  same,  and  any  proceedings  relative  thereto,  shall 
not  operate  to  save  the  application  from  abandonment. 

57c.  Before  an  application  abandoned  by  failure  to  complete  or  prose- 
cute can  be  revived  as  a  pending  application  it  must  be  shown  to  the 
satisfaction  of  the  commissioner  that  the  delay  in  the  prosecution  of  the 
same  was  unavoidable. 

57d.  When  a  new  application  is  filed  in  place  of  an  abandoned  or 
rejected  application,  a  new  petition,  statement,  declaration,  drawing, 
and  fee  will  be  required. 

ISSUE,  DATE,  AND   DURATION   OF   CERTIFICATE 

58.  When  the  requirements  of  the  law  and  of  the  rules  have  been 

complied  with,  and  the  office  has  adjudged  a  trade- 
i905,*sec°ii.^'^'''   ^°'  mark  registrable,   a  certificate  will   be  issued,   signed 

by  the  commissioner,  under  the  seal  of  the  Patent 
Office,  to  the  effect  that  the  applicant  has  complied  with  the  law  and 
that  he  is  entitled  to  registration  of  his  trade-mark.  The  certificate 
shall  state  the  date  on  which  the  application  for  registration  was  re- 
ceived in  the  Patent  Office.  Attached  to  the  certificate  will  be  a  pho- 
tolithographed  copy  of  the  drawing  of  the  trade-mark  and  a  printed 
copy  of  the  statement  and  of  the  declaration. 

59.  A  certificate  of  registration  shall  remain  in  force  20  years  from 

its  date,  except  that,  in  case  a  trade-mark  be  previously' 
i905?sec!  i2^''^"  ^^'  registered  in  a  foreign  country,  such  certificate  shall 

cease  to  be  in  force  on  the  day  on  which  the  trade-mark 
ceases  to  be  protected  in  such  foreign  country,  and  shall  in  no  case 
remain  in  force  more  than  20  years  unless  renewed. 

60.  A  certificate  of  registration  may  be,  from  time  to  time,  renewed 

for  like  periods  on  payment  of  the  renewal  fees  re- 
i905*secs.  iflnd  h!  Qi^ured,  upon  request  by  the  registrant,  his  legal  re- 
presentatives, or  transferees  of  record  in  the  Patent 
Office,  and  such  request  may  be  made  at  any  time  not  more  than  six 
months  prior  to  the  expiration  of  the  period  for  which  the  certificate 
of  registration  was  issued  or  renewed. 

61.  Certificates  of  registration  in  force  on  the  1st  day  of  April,  1905, 

shall  remain  in  force  for  the  periods  for  which  they  were 
i905,*?ea^i2^*''''  ^"'  issued,  and  shall  be  renewable  on  the  same  conditions 

and  for  the  samc^  periods  as  certificates  issued  under 
the   provisions  of   the  act  of  February  20,   1905,  and,  when  so   re- 


Registration  of  Trade-Marks  [761]        27 

newed,  shall  have  the  same  force  and  effect  as  certificates  issued  there- 
under. 

G2.  A  certificate  of  registration  shall  not  be  issued  to  an  applicant 

located  in  a  foreign  country  foi-  any  trade-mark,  for 
1905  *  sec!  4.  ^*^'^'  ^°'  registration  of  which  he  has  filed  an  application  in  such 

foreign  country,  until  such  mark  has  been  actually 
registered  by  him  in  the  country  in  which  he  is  located. 

ASSIGNMENTS 

63.  Every  registered  trade-mark  and  every  mark  for  the  registra- 

tion of  which  application  has  been  made,  together 
1905^,* sec!  la'^'^'    ^°'  with  the  application  for  registration  thereof,  shall  be 

assignable  in  connection  with  the  good  will  of  the 
business  in  which  the  mark  is  used.  Such  assignment  must  be  by  an 
instrument  in  writing  and  duly  acknowledged  according  to  the  laws 
of  the  country  or  State  in  which  the  same  is  executed.  Provision  is 
made  for  recording  such  assignments  in  the  Patent  Office;  but  no  such 
assignment  will  be  recorded  unless  it  is  in  the  English  language,  nor 
unless  an  application  for  the  registration  of  the  mark  shall  have  been 
first  filed  in  the  Patent  Office,  and  such  assignment  must  identify  the 
application  by  serial  number  and  date  of  filing,  or,  when  the  mark  has 
been  registered,  by  the  certificate  number  and  the  date  thereof.  No 
particular  form  of  assignment  is  prescribed. 

64.  An  assignment  shall  ])e  void  as  against  any  subsequent  pur- 

chaser for  a   valuable   consideration,   without   notice, 
1905  *8ec!  10^*^^'  ^°'  unless  it  be  recorded  in  the  Patent  Office  within  three 
months  from  the  date  thereof. 

65.  The  certificate  of  registration  may  be  issued  to  the  assignee  of 

the  applicant,  but  the  assignment  must  first  be  en- 
1905.' sec^  iL '^"  ^^'  tercd  of  record  in  the  Patent  Office. 

COPIES  AND   PUBLICATIONS 

66.  After  a  trade-mark  has  been  registered,  printed  copies  of  the 

statement  and  declaration  in  each  case,  with  a  photo- 
i905*sccs.  u  a^nd  u'.  lithographed  copy  of  the  drawing  of  the  trade-mark, 

may  be  furnished  by  the  office  upon  the  payment  of 
the  fee.    (See  rule  69.) 

67.  An  order  for  a  copy  of  an  assignment  must  give  the  liber  and 
page  of  the  record,  as  well  as  the  name  of  the  applicant;  otherwise  an 
extra  charge  will  be  made  for  the  time  consumed  in  making  a  search 
for  such  assignment. 

68.  The  Official  Gazette  of  the  Patent  Office  will  contain  a  list  of 
all  trade-marks  registered,  giving,  in  each  case,  a  statement  of  the 
goods  to  which  the  trade-mark  is  applied,  the  name  and  address  of  the 
applicant,  the  date  of  filing  and  serial  number  of  the  application,  and 
the  date  of  the  publication  of  the  trade-mark  in  the  Official  Gazette. 


28        [7G2]  Registration  of  Trade-Marks 

FEES 
69. 

On  filing  each  original  application  for  registration  of  a  trade-mark $10.00 

On  filing  each  application  for  renewal  of  the  registration  of  a  trade-mark...  .  10.00 

On  filing  notice  of  opposition  to  the  registration  of  a  trade-mark 10.00 

On  appeal  from  the  examiner  in  charge  of  trade-marks  to  the  (Commissioner  of 

Patents 1.5.00 

On  appeal  from  the  decision  of  the  examiner  in  charge  of  interferences,  award- 
ing ownership  of  a  trade-mark  or  canceling  the  registration  of  a  trade-mark, 

to  the  Commissioner  of  Patents 15.00 

On  a[)peal  from  the  decision  of  the  examiner  in  charge  of  trade-marks,  f)n  a 
mot  ion  for  the  di.ssoliif  ion  of  an  interference  on  the  ground  of  noninterference 

in  fact  or  nonregistrahility  of  a  mark,  to  the  Commissioner  of  Patents 15.00 

For  manuscript  copies,  for  every  100  words  or  fraction  thereof .10 

For  recording  every  assignment,  j)ower  of  attorney,  or  otlier  paper  of  300 

words  or  under 1 .00 

Of  over  300  and  uiider  1,000  words 2.00 

And  for  each  additional  thousand  words  or  fraction  thereof 1.00 

For  abstracts  of  title: 

For  the  search,  one  hour  or  less,  and  certificate 1.00 

Each  additional  hour  or  fraction  thereof .50 

For  each  brief  from  the  digest  of  assignments  of  200  words  or  less .2C 

Each  additional  hundred  words  or  fraction  thereof .10 

For  searching  title  or  records,  one  hour  or  less .50 

Each  additional  hour  or  fraction  thereof .50 

For  a  single  printed  copy  of  statement,  declaration,  and  drawing .05 

If  certified,  for  the  grant,  additional .50 

For  the  certificate .25 

70.  All  payments  of  money  required  for  office  fees  must  be  made 
R     St     493^      ^^  specie,  Treasury  notes,  national-bank  notes.  Treas- 
ury certificates  of  deposit,   post-office  money  orders, 

bank  drafts,  or  certified  checks.  Money  orders  and  checks  should  be 
made  payable  to  the  "Commissioner  of  Patents,"  Payment  may  also 
be  made  to  the  Treasurer,  or  to  any  of  the  assistant  treasurers  of  the 
United  States,  or  to  any  of  the  depositaries,  national  banks,  or  re- 
ceivers of  public  money,  designated  by  the  Secretary  of  the  Treasury 
for  that  purpose,  who  shall  give  the  depositor  a  receipt  or  certificate 
of  deposit  therefor.  The  duplicate  receipt  or  certificate  of  deposit  must 
be  filed  in  the  Patent  Office  within  ten  days  after  the  money  is  paid. 

71.  Money  sent  by  mail  to  the  Patent  Office  will  be  at  the  risk  of 
the  sender.    Letters  containing  money  should  be  registered. 

REPAYMENT  OF   MONEY 

72.  Money  paid  by  actual  mistake,  such  as  a  payment  in  excess,  or 
Rev    Stat     49.3G-  ^^^^^'^  ^^t  required  by  law,  or  by  neglect  or  misinfor- 

act  of  Feb.  20,  1905,'  matiou  ou  the  part  of  the  oflice,  will  be  refunded;  but 
^'^'''  ^^'  a  mere  change  of  purpose  after  the  payment  of  money, 

as  when  a  party  desires  to  withclraw  his  application  for  the  registra- 
tion of  a  trade-mark,  or  to  withdraw  an  appeal,  will  not  entitb-  a  party 
to  demand  such  a  return. 

NOTICE  OF  REGISTRATION 

73.  It  shall  be  the  duty  of  the  registrant  to  give  notice  to  the  public 
that  a  trade-mark  is  registered,  either  by  affixing  thereon  the  words 

"Registered  in  U.  S.  Patent  Office,"  or  "Reg.  U.  S. 
i905?8ec.^28^''^'  ^^'  P^t.  Off.,"  or,  whcu  from  the  character  and  size  of  the 

trade-mark,  or  from  its  manner  of  attachment  to  the 
article  to  which  it  is  appropriated,  this  can  not  l)e  done,  then  by  affixing  a 
label  containing  a  like  notice  to  the  package  or  receptacle  wherein  the 


Registration  of  Trade-Marks  [763]        29 

article  or  articles  are  inclosed ;  otherwise,  on  a  suit  for  infringement,  no 
damages  shall  be  recovered  except  on  proof  that  the  defendant  was  duly 
notified  of  infringement,  and  continued  the  same  after  such  notice. 

AMENDMENTS  OF  THE  RULES 

74.  All  amendments  of  the  foregoing  rules  will  be  published  in  the 
Official  Gazette. 

QUESTIONS   NOT   SPECIFICALLY  PROVIDED   FOR 

75.  All  cases  not  specifically  defined  and  provided  for  in  these  rules 
will  be  decided  in  accordance  with  the  merits  of  each  case  under  the 
authority  of  the  commissioner,  and  such  decision  will  be  communi- 
cated to  the  interested  parties  in  writing, 

Thomas  Ewing, 
Commissioner  of  Patents. 


The  foregoing  rules  were  approved  October  14,  1911,  by  the  Secre- 
tary of  the  Interior. 


RECORDING  TRADE-MARKS  WITH  COLLECTORS  OF  CUSTOMS 

Treasury  Department,  September  7,  1909. 
To  collectors  of  customs  and  others  concerned: 

The  attention  of  officers  of  the  customs  and  others  is  invited  to  the 
following  provisions  of  section  27  of  the  act  approved  February  20, 
1905,  effective  April  1, 1905: 

Sec.  27.  That  no  article  of  imported  merchandise  which  shall  copy  or  simulate 
the  name  of  any  domestic  manufacture,  or  manufacturer  or  trader,  or  of  any  manu- 
facturer or  trader  located  in  any  foreign  country  which,  by  treaty,  convention,  or 
law  affords  similar  privileges  to  citizens  of  the  United  States,  or  which  shall  copy  or 
simulate  a  trade-mark  registered  in  accordance  with  the  provisions  of  this  act,  or 
shall  bear  a  name  or  mark  calculated  to  induce  the  public  to  believe  that  the  article 
is  manufactured  in  the  United  States,  or  that  it  is  manufactured  in  any  foreign  coun- 
try or  locality  other  than  the  country  or  locality  in  which  it  is  in  fact  manufactured, 
shall  be  admitted  to  entry  at  any  customhouse  of  the  United  States;  and,  in  order 
to  aid  the  officers  of  the  customs  in  enforcing  this  prohibition,  any  domestic  manu- 
facturer or  trader,  and  any  foreign  manufacturer  or  trader,  who  is  entitled  under  the 
provision  of  a  treaty,  convention,  declaration,  or  agreement  between  the  United 
States  and  any  foreign  country  to  the  advantages  afforded  by  law  to  citizens  of  the 
United  States  in  respect  to  trade-marks  and  commercial  names,  may  require  hia 
name  and  residence,  and  the  name  of  the  locality  in  which  his  goods  are  manufac- 
tured, and  a  copy  of  the  certificate  of  registration  of  his  trade-mark,  issued  in  accord- 
ance with  the  provisions  of  this  act,  to  be  recorded  in  books  which  shall  be  kept  for 
this  purpose  in  the  Department  of  the  Treasury,  under  such  regulations  as  the  Secre- 
tary of  the  Treasury  shall  prescribe,  and  may  furnish  to  the  department  facsimiles 
of  his  name,  the  name  of  the  locality  in  which  his  goods  are  manufactured,  or  of  his 
registered  trade-mark;  and  thereupon  the  Secretary  of  the  Treasury  shall  cause  one 
or  more  copies  of  the  same  to  be  transmitted  to  each  collector  or  other  proper  officer 
of  customs. 

The  provisions  of  this  section  give  to  manufacturers  and  traders 
located  in  foreign  countries,  which,  by  treaty  stipulations,  give  similar 
privileges  to  the  United  States,  the  same  advantages  as  are  given  to 
domestic  manufacturers  and  traders.  The  act  does  not  affect  names 
or  trade-marks  heretofore  recorded  in  the  Treasury  Department,  and 
as  to  them  the  protection  granted  so  far  as  concerns  prohibition  of 
importation  will  continue.  Nor  does  the  act  appear  to  make  it  com- 
pulsory on  the  part  of  domestic  manufacturers  or  traders,  or  foreign 


30        [7G4]  Registration  of  Trade-Marks 

manufacturers  or  traders,  to  register  names  (not  trade-marks)  with 
the  Commissioner  of  Patents,  in  order  to  prevent  illegal  importations. 

Domestic  manufacturers  and  traders  and  foreign  manufacturers 
and  traders,  to  avail  themselves  of  the  privileges  of  the  act,  so  far  as 
concerns  trade-marks,  are  required  to  register  their  trade-marks  with 
the  Commissioner  of  Patents  before  the  Treasury  Department  can  act. 

Applications  for  recording  the  names  and  trade-marks  in  this  depart- 
ment under  section  27  will  state  the  name  of  the  owner,  his  resid(;nce, 
and  the  locality  in  which  his  goods  are  manufactured,  and  in  the  case 
of  trade-marks  should  be  accompanied  with  a  certified  copy  of  the  cer- 
tificate of  registration  of  his  trade-mark  issued  in  accordance  with  the 
provisions  of  the  act  and  the  names  of  the  ports  to  which  facsimiles 
should  be  sent.  In  the  case  of  the  name  of  a  domestic  manufacture, 
manufacturer,  or  trader  (not  registered  as  a  trade-mark  in  the  Patent 
Office),  the  application  must  be  accompanied  by  the  proper  proof  of 
ownership  and  proof  as  to  the  country  or  locality  in  which  his  goods 
are  manufactured,  which  must  consist  of  the  affidavit  of  the  owner  or 
one  of  the  owners,  certified  by  an  officer  entitled  to  administer  oaths 
and  having  a  seal. 

On  the  receipt  by  a  customs  officer  of  any  such  facsimiles,  with  in- 
formation from  the  department  that  they  have  been  recorded  therein, 
he  will  properly  record  and  file  them  and  will  exercise  care  to  prevent 
the  entry  at  the  customhouse  of  any  article  of  foreign  manufacture 
copying  or  simulating  such  mark. 

No  fees  are  charged  for  recording  trade-marks  in  the  Treasury  De- 
partment and  customhouses. 

A  sufficient  number  of  facsimiles  should  be  forwarded  to  enable  the 
department  to  send  one  copy  to  each  port  named  in  the  application, 
with  ten  additional  copies  for  the  files  of  the  department. 

Especial  attention  is  invited  to  the  provision  in  said  section  pro- 
hibiting the  entry  of  articles  "which  shall  bear  a  name  or  mark  calcu- 
lated to  induce  the  public  to  believe  that  the  article  is  manufactured 
in  the  United  States,  or  that  it  is  manufactured  in  any  foreign  country 
or  locality  other  than  the  country  or  locality  in  which  it  is  in  fact  man- 
ufactured," and  collectors  and  other  officers  of  the  customs  are  instructed 
to  use  due  diligence  to  prevent  violations  of  this  provision. 

The  provisions  of  the  act  also  apply  to  Porto  Rico,  the  Philippine 
Islands,  Hawaii,  and  any  other  territory  under  the  jurisdiction  and  con- 
trol of  the  United  States. 

Attention  is  also  invited  to  the  following  provisions  of  section  3  of 
the  act  approved  May  4,  1906,  effective  July  1,  190G: 

Sec.  3.  That  any  owner  of  a  trade-mark  who  shall  have  a  manufacturing  establish- 
ment within  the  territory  of  the  United  States  shall  be  accorded,  so  far  as  the  regis- 
tration and  protection  of  trade-marks  used  on  the  products  of  such  establishment 
are  concerned,  the  same  rights  and  privileges  that  are  accorded  to  owners  of  trade- 
marks domiciled  within  the  territory  of  the  United  States  by  the  act  entitled  "An 
act  to  authorize  the  registration  of  trade-marks  used  in  commerce  with  foreign  na- 
tions or  among  the  several  States  or  with  Indian  tribes,  and  to  protect  the  same,"  ap- 
proved February  20,  1905. 

This  department  has  ruled  that  affidavits  accompanying  applications 
for  recording  the  names  of  foreign  manufactures,  manufacturers,  or 
traders  (not  registered  as  trade-marks  in  the  Patent  Office)  may  be 
certified  by  American  consular  officers. 

JAMES  B.  REYNOLDS,  Acting  Secretary. 


FORMS 

.  The  following  forms  illustrate  the  manner  of  preparing  papers  for 
applications  for  registration  of  trade-marks.  Applicants  will  find  their 
business  facilitated  by  following  them. 

(1)  PETITION 

To  the  Commissioner  of  Patents: 
The  undersigned  presents  herewith  a  drawing  and  five  specimens 

(Or  facsimiles.) 

of  his  trade-mark,  and  requests  that  the  same,  together  with  the  ac- 
companying statement  and  declaration,  may  be  registered  in  the  United 
States  Patent  Office  in  accordance  with  the  law  in  such  cases  made  and 
provided. 

John  Doe. 

(Signature  of  applicant.) 

Dated  June  15,  1906. 

(Date  of  execution.) 

(2)  STATEMENT  FOR  AN  INDIVIDUAL 

To  all  whom  it  may  concern : 

Be  it  known  that  I,  John  Doe,  a  citizen  of  the  United  States  of  America, 

(Name  of  applicant.)  (Citizenship  of  applicant.) 

residing  at  Philadelphia,  courity  of  Philadelphia,  State  of  Pennsylvania, 

(.Applicant's  address.) 

and  doing  business  at  No.  1300  Chestnut  Street,  in  said  city,  have  adopted 

(Business  address.) 

and  used  the  trade-mark  shown  in  the  accompanying  drawing  i  for 

canned  fruits  and  vegetables,  in  class  No.  4.6,  Foods  and  ingredients  of  foods. 

(Particular  description  of  goods.)  (Number  and  title  of  class — see  classification.) 

The  trade-mark  has  been  continuously  used  in  my  business  {and  in 
the  business  of  my  predecessor,  Richard  Roe,^)  since  February  1,  18S9. 

(Name  of  predecessor,  if  any.)  (Earliest  date  of  use.) 

The  trade-mark  is  applied  or  affixed  to  the  goods,  or  to  the  packages 
containing  the  same,  by  placing  thereon  a  printed  label  on  which  the  irade- 

(Or  state  other  mode  or  modes  of  application.) 

mark  is  shown. 

John  Doe. 

(Signature  of  applicant.) 

(First  name  must  be  given  in  full.) 

(3)  DECLARATION     FOR    AN     INDIVIDUAL 

State  of  Pennsylvania,    ) 
County  of  Philadelphia,  > 
John  Doe,  being  duly  sworn,  deposes  and  says  that  he  is  the  appli- 

(Name  of  applicant.) 

cant  named  in  the  foregoing  statement;  that  he  l)olieves  the  foregoing 
statement  is  true;  that  he  believes  himself  to  be  the  owner  of  the  trade- 

'  See  rule  22  (6).  2  jf  applicant  has  had  no  predecessors,  omit  this  clause. 

[765]        31 


32        [766]  Registration  of  Trade-Marks 

mark  .sought  to  be  registered;  that  no  other  person,  firm,  corporation, 
or  association,  to  the  best  of  his  knowledge  and  behef,  has  the  right  to 
use  said  trade-mark  in  the  United  States,  either  in  the  identical  form 
or  in  any  such  near  resemblance  thereto  as  might  be  calculated  to  de- 
ceive; that  said  trade-mark  is  used  by  him  in  commerce  among  the  several 
States  of  the  United  States  (and  between  the  United  States  and  foreign 
nations  or  Indian  tribes,  and  particularly  with  England  and  Germany) ;  i 

(Names  of  foreign  countries  or  Indian  tribes.) 

that  the  description  and  drawing  presented  truly  represent  the  trade- 
mark sought  to  be  registered;  and  that  the  specimens  show  the  trade- 

(Or  facsimiles.) 

mark  as  actually  used  upon  the  goods. 

John  Doe. 

(Signature  of  applicant.) 

Subscribed  and  sworn  to  before  me,  a  notary  public,  this  15th  day  of 

(Official  title.)  (Date  of 

June,  1906, 

execution.) 

[l.  s.]  Richard  Jones, 

Notary  Public. 

(Official  title.) 

(4)  STATEMENT  FOR  A  FIRM 

To  all  whom  it  may  concern: 

Be  it  known  that  we,  John  Doe  &  Co.,  a  firm  domiciled  in  New  York, 

(Firm  name.) 

county  of  New  York,  State  of  New  York,  doing  business  at  No.  36  Fulton 

(Domicile.)  (Business  address.) 

Street,  in  said  city,  and  composed  of  the  following  members,  John  Doe, 
Richard  Roe,  and  Henry  Poe,  citizens  of  the  United  States  of  America,  have 

(Names  of  members  of  the  firm.)  (Citizenship  of  members  of  the  firm.) 

adopted  and  used  the  trade-mark  shown  in  the  accompanying  drawing  ^ 
for  surgical  bandages,  in  class  No.  44,  Dental,  medical,  and  surgical 

(Particular  description  of  goods.)  (Number  and  title  of  class.    See  classification.) 

applia7ices. 

The  trade-mark  has  been  continuously  used  in  our  business  (and 
in  the  business  of  our  predecessors.  Doe  &  Roe,^)  since  January  1,  1902. 

(Name  of  predecessors,  if  any.)  (Earliest  date  of  use.) 

The  trade-mark  is  applied  or  affixed  to  the  goods,  or  to  the  packages 
containing  the  same,  by  placing  thereon  a  printed  label  on  which  the  tradc- 

(Or  state  other  mode  or  modes 

mark  is  shown. 

of  application.) 

John  Doe  &  Co., 

(Firm  name.) 

By  Richard  Roe, 

(Signature  of  a  member  of  tlie  firm.) 

A  Member  of  the  Firm. 

1  If  applicant  docs  nut  have  commerce  with  foreign  nations  or  Indian  tribes,  this  clause  should  be 
omittcil. 

J  See  rule  22  (h). 

>  If  applicant  has  had  no  predecessors,  omit  this  clause. 


Registration  of  Trade-Marks  [767]        33 

(6)  DECLARATION  FOR  A  FIRM 

State  of  New  York,  ) 

County  of  New  York,  ) 

Richard  Roe,  being  duly  sworn,  deposes  and  says  that  he  is  a  mem- 

(Name  of  affiant.) 

bcr  of  the  firm,  the  applicant  named  in  the  foregoing  statement;  that 
he  believes  the  foregoing  statement  is  true;  that  he  believes  said  firm 
is  the  owner  of  the  trade-mark  sought  to  be  registered;  that  no  other 
person,  firm,  corporation,  or  association,  to  the  best  of  his  knowledge 
and  belief,  has  the  right  to  use  said  trade-mark  in  the  United  States, 
cither  in  the  identical  form  or  in  any  such  near  resemblance  thereto  as 
might  be  calculated  to  deceive;  that  said  trade-mark  is  used  by  said 
firm  in  commerce  among  the  several  States  of  the  United  States  (and 
between  the  United  States  and  foreign  nations  or  Indian  tribes,  and 
particularly  with  France  and  Spain  i) ;  that  the  description  and  draw- 

(Names  of  foreign  countries 
or  Indian  tribes.) 

ing  presented  truly  represent  the  trade-mark  sought  to  be  registered; 
and  that  the  specimens  show  the  trade-mark  as  actually  used  upon  the 

(Or  facsimiles.) 

goods. 

Richard  Roe. 

(Signature  of  affiant.) 

Subscribed  and  sworn  to  before  me,  a  notary  public,  this  15th  day  of 

(Official  title.) 

January,  1906. 

(Date  of  execution.) 

[l.  s.]  Harry  Brown, 

Notary  Public. 

(Official  title.) 

(6)  STATEMENT   FOR   A   CORPORATION   OR  ASSOCIATION 

To  all  whom  it  may  concern: 

Be  it  known  that   Union  Manufacturing  Co.,  a  corporation  ^  duly 

(Name  of  applicant.) 

organized  under  the  laws  of  the  State  of  Maine,  and  located  in  the  city 

(State  or  country  under  the 
laws  of  which  organized.) 

of  Brunswick,  county  of  Cumberland,  in  said  State,  and  doing  business 

(Location  of  corporation.) 

at  No.  326  Atlantic  Avenue,  in  the  city  of  Boston,  State  of  Massachusetts, 

(Business  address.) 

has  adopted  and  used  the  trade-mark  shown  in  the  accompanying 
drawing,^  for  arc  and  incandescent  electric  lamps  and  electric  heaters, 

(Particular  description  of  goods.) 

in  Class  No.  21,  Electrical  apparatus,  machines,  and  supplies. 

(Number  and  title  of  class.     See  classification.) 

The  trade-mark  has  been  continuously  used  in  the  business  of  said 
corporation  ^  {and  in  the  business  of  its  predecessors,  John  Doe  Com- 

(Name  of  predecessors,  if  any.) 

pany «)  since  January  30,  1898. 

(Give  earliest  date  of  use.) 

'  If  applicant  does  not  have  commerce  with  foreign  nations  or  Indian  tribes,  this  clause  should  be 
omitted. 

2  If  the  applicant  be  an  association,  the  word  "association"  should  be  substituted  for  the  word  "cor- 
poration." 

3  See  rule  22  (6). 

*  If  applicant  has  had  no  predecessors,  omit  this  clause. 


34        [768]  Kegistkation  of  Tkade-Marks 

The  trade-mark  is  applied  or  affixed  to  the  goods,  or  to  the  pack- 
ages containing  the  same,  by  placing  thereon  a  printed  label  on  which  the 
trade-mark  is  shown.  ^^^  ^^'^^'^  "^'^^■'"  ™"'J''' "''  "^"^'^'*  °f 

application.) 

Union  Manufacturing  Co., 

(Nutno  of  applicant.) 

By  John  Doe,  Secretary. 

(Signature  of  officer.)     (Official  title.) 

(7)  DECLARATION  FOR  A  CORPORATION  OR  ASSOCIATION 

State  of  Massachusetts,  } 
County  of  Sujfollc,  f 
John  Doe,  l)eing  duly  sworn,  deposes  and  says  that  he  is  the  sccre- 

(Name  of  affiant.) 

tary  of  the  corporation,^  the  applicant  named  in  the  foregoing  state- 

(Official  title.) 

ment;  that  he  believes  the  foregoing  statement  is  true;  that  he  believes 
said  corporation  ^  is  the  owner  of  the  trade-mark  sought  to  be  regis- 
tered; that  no  other  person,  firm,  corporation,  or  association,  to  the 
best  of  his  knowledge  and  belief,  lias  the  right  to  use  said  trade-mark 
in  the  United  States,  either  in  the  identical  form  or  in  any  such  near 
resemblance  thereto  as  might  be  calculated  to  deceive;  that  said  trade- 
mark is  used  by  said  corporation  i  in  commerce  among  the  several 
States  of  the  United  States  (and  between  the  United  States  and  foreign 
nations  or  Indian  tribes  and  particularly  with  Italy  and  France  =) ;  that 

(Names  of  forcicn  nations 
or  Indian  tribes.) 

the  description  and  drawing  presented  truly  represent  the  trade-mark 
sought  to  be  registered;  and  that  the  specimeris  show  the  trade-mark 

(Or  facsimiles.) 

as  actually  used  upon  the  goods. 

John  Doe. 

(Signature  of  affiant.) 

Subscribed  and  sworn  to  before  me,  a  notary  public,  this  20th  dav 

(Official  title.)  (Date  of 

of  February,  1906. 

execution.) 

[l.  s.]  William  Grane, 

Notary  Public. 

(Official  title.) 

(8)  DECLARATION  FOR  APPLICANTS  UNDER  THE  TEN-YEAR  PROVISO  ' 

State  of  Connecticut,  } 
County  of  Fairfield,  ^ 
Richard  Roe,  being  duly  sworn,  deposes  and  says  that  he  is  the  ap- 

(Nanie  of  applicant.) 

plicant  named  in  the  foregoing  statement;  that  he  believes  the  fore- 
going statement  is  true;  that  he  believes  himself  to  be  the  owner  of 
the  mark  sought  to  be  registered;  that  no  other  person,  firm,  corpora- 
tion, or  association,  to  the  best  of  his  knowledge  and  belief,  has  the 
right  to  use  said  mark  in  the  United  States,  either  in  the  identical  form 
or  in  an}'  such  near  resemblance  thereto  as  might  be  calculated  to  de- 

■  If  applicant  be  an  association,  the  word  "association"  should  be  substituted  for  the  word  "corpora- 
tion." 

2  If  the  applicant  does  not  have  commerce  with  foreign  nations  or  Indian  tribes,  this  clause  should  be 
omitted. 

'  In  case  the  applicant  is  a  firm,  corporation,  or  association,  the  declaration  should  be  modified  accord- 
ingly. 


Registration  of  Trade-Marks  [769]        35 

ceive;  that  said  mark  is  used  by  him  in  commerce  among  the  several 
States  of  the  United  States  (and  between  the  United  States  and  foreign 
nations,  or  Indian  tribes,  and  particularly  with  Russia  and  Turkey) ;  i 

(Names  of  foreign  nations  or  Indian  tribes.) 

that  the  description  and  drawing  presented  truly  represent  the  mark 
sought  to  be  registered;  that  the  specimens  show  the  mark  as  actually 

(Or  facsimiles.) 

used  upon  the  goods;  and  that  the  mark  has  been  in  actual  use  as  a 
trade-mark  of  the  applicant  (and  applicants  predecessors  from  whom 
title  was  derived  2)  for  ten  years  next  preceding  February  20,  1905, 
and  that,  to  the  best  of  his  knowledge  and  belief,  such  use  has  been 
exclusive. 

Richard  Roe. 

(Signature  of  affiant.) 

Subscribed  and  sworn  to  before  me,  a  notary  public,  this  15th  day 

(Official  title.)  (Date 

of  February,  1906. 

of  execution.) 

[l.  s.]  Charles  Mason, 

Notary  Public. 

(Official  title.) 

(9)  DECLARATION   FOR  FOREIGNERS 

United  States  Consulate,  } 
London,  England,  \ 
John  Doe,  being  duly  sworn,  deposes  and  says  that  he  is  the  appli- 

(Name  of  affiant.) 

cant  named  in  the  foregoing  statement;  that  he  believes  the  foregoing 
statement  is  true;  that  he  believes  himself  to  be  the  owner  of  the  trade- 
mark sought  to  be  registered;  that  no  other  person,  firm,  corporation, 
or  association,  to  the  best  of  his  knowledge  and  belief,  has  the  right  to 
use  said  trade-mark  in  the  United  States,  either  in  the  identical  form 
or  in  any  such  near  resemblance  thereto  as  might  be  calculated  to  de- 
ceive; (that  said  trade-mark  has  been  registered  in  England,  on  June  1, 

(Name  of  country.)  (Date.) 

1900,  No.  493I6;  *)  that  the  description  and  drawing  presented  truly 

(Number  of  registration.) 

represent  the  trade-mark  sought  to  be  registered;  and  that  the  speci- 

(Or  facsimiles.) 

mens  show  the  trade-mark  as  actually  used  upon  the  goods. 

John  Doe. 

(Signature  of  affiant.) 

Subscribed  and  sworn  to  before  me,  a  United  States  consul,  this  Wth 

(Official  title.) 

day  of  January,  1906. 

(Date  of  execution.) 

[seal.]  Richard  Jones, 

United  States  Consul. 

(Official  title.) 

1  If  applicant  does  not  have  commerce  with  foreign  nations  or  Indian  tribes,  this  clause  should  be 
omitted. 

'  If  applicant  has  had  no  predecessors,  this  clause  should  be  omitted. 

'  In  case  the  applicant  is  a  firm,  corporation,  or  association,  the  declaration  should  be  modified  accord- 
ingly. 

*  If  the  trade-mark  has  not  yet  been  registered,  but  an  application  for  registration  has  been  filed  in  the 
country  where  applicant  resides  or  is  located,  this  clause  should  be  omitted  and  the  following  substi- 
tuted therefor: 

"that  an  application  for  registration  of  said  trade-mark  was  filed  by  him  on  the  20th  day  of  January, 
1900,  in  England;"  (Date  of  filing.) 

(Name  of  country.) 


36        [770]  Registration  of  Trade-Marks 

(10)  STATEMENT  FOR  AN  INDIVIDUAL  UNDER  SECTION  3  OF  THE  ACT  OF 

MAY  4,   1906  1 

To  all  whom  it  may  concern : 

Be  it  known  that  I,  Richard  Roe,  a  subject  of  the  King  of  England, 

(Name  of  applicant.)  (Citizenship  of  applicant.) 

residing  at  London,  England,  and  doing  business  at  No.  26  Thread- 

(Applicant'a  residence.)  (Business  address.) 

needle  street,  in  said  city,  and  having  a  manufacturing  establishment 
at  Hartford,  State  of  Connecticut,  have  adopted  and  used  the  trade- 
mark shown  in  the  accompanying  drawing «  for  the  following  products 
of  such  manufacturing  establishment,  namely,  rubber  boots  and  shoes, 

(Particular  description  of  goods.) 

in  Class  No.  39,  Clothing. 

(Number  and  title  of  class.    See  classification.) 

The  trade-mark  has  been  continuously  used  in  my  business  (and  in 
the  business  of  my  predecessor,  John  W.  Brown ')  since  January  1,  1901. 

(Name  of  predecessor,  if  any.)  (Earliest  date  of  use.) 

The  trade-mark  is  applied  or  affixed  to  the  goods,  or  to  the  packages 
containing  the  same,  by  'placing  thereon  a  printed  label  on  which  the 

(Or  state  other  mode  or  modes  of 

trade-mark  is  shown. 

application.) 

Richard  Roe. 

(Signature  of  applicant.) 

(11)  DECLARATION  FOR  FOREIGNERS  UNDER  SECTION  3  OF  THE  ACT  OF 

MAY  4,   1906* 

United  States  Consulate,  >  '  -  -" 't*^--^'^-     j 

London,  England,        >     * 
Richard  Roe,  being  duly  sworn,  deposes  and  says  that  he  is  the  ap- 

(Name  of  affiant.) 

plicant  named  in  the  foregoing  statement;  that  he  believes  the  fore- 
going statement  is  true;  that  he  believes  himself  to  be  the  owner  of 
the  trade-mark  sought  to  be  registered;  that  no  other  person,  firm, 
corporation,  or  association,  to  the  best  of  his  knowledge  and  belief, 
has  the  right  to  use  said  trade-mark  in  the  United  States,  either  in  the 
identical  form  or  in  any  such  near  resemblance  thereto  as  might  be 
calculated  to  deceive;  that  said  trade-mark  is  used  by  him  in  commerce 
among  the  several  States  of  the  United  States  (and  between  the  United 
States  and  foreign  nations  or  Indian  tribes,  and  particularly  with 
England  and  Germany  *) ;  that  the  description  and  drawing  presented 

(Names  of  foreign  countries  or  Indian  tribes.) 

truly  represent  the  trade-mark  sought  to  be  registered;  that  the  speci- 

(Or  facsimiles.) 

mens  show  the  trade-mark  as  actually  used  upon  the  goods;  that  his 
manufacturing  establishment  is  located  at  Hartford,  State  of  Connecticut; 

(Location  of  manufacturing  establishment.) 

and  that  the  goods  for  which  the  trade-mark  is  claimed  in  this  applica- 
tion are  the  products  of  such  establishment. 

Richard  Roe. 

(Signature  of  affiant.) 

'  In  case  applicant  be  a  firm,  corporation,  or  association,  the  statement  should  be  modified  accordingly. 

»See  rule  22  (b). 

'  If  applicant  has  had  no  predecessor,  omit  this  clause. 

*  In  case  applicant  be  a  firm,  corporation,  or  association,  the  declaration  should  be  modified  accord- 
ingly. 

'  If  applicant  does  not  have  commerce  with  foreign  nations  or  Indian  tribes  this  clause  should  be 
omitted. 


Registration  of  Tpiade-Marks  [771]        37 

Subscribed  and  sworn  to  before  me,  a  United  States  consul,  this  Idth 
day  of  June,  1906. 

(Date  of  execution.) 

[seal.]  Richard  Jones, 

United  States  Consul. 

(Official  title.) 

(12)  NOTICE  OF  OPPOSITION  > 

To  the  Commissioner  of  Patents: 

In  the  matter  of  an  apphcation  for  the  registration  of  a  trade-mark 
for  sewing  machines.  Serial  No.  1906,  filed  April  15,  1906,  by  John 

(Particular  goods.)  (Number  and  date  of  application.)  (Name  of 

Doe,  of  San  Francisco,  Cal.,  which  was  pubhshed  on  page  1746,  Vol. 

applicant.)  (Location  or  residence  of  applicant.)  (Page, 

120,  No.  13,  of  the  Official  Gazette  of  June  13,  1906,  I,  Richard  Roe, 

volume,  number,  and  date  of  the  Official  Gazette.)  (Name  of  party  opposing.) 

residing  at  No.  12  Clarke  street,  city  of  Chicago,  State  of  Illinois,  believe 

(Residence  or  location  of  party  opposing.) 

I  would  be  damaged  by  such  registration  and  I  hereby  give  notice  of  my 
intention  to  oppose  the  registration  of  said  trade-mark. 
The  grounds  for  opposition  are  as  follows: 

(Here  state  the  grounds  for  opposing  registration.) 

Richard  Roe. 

(Signature  of  opposing  party.) 

State  of  Illinois,     \ 

County  of  Cook,  \     ' 

Richard  Roe,  being  duly  sworn  (or  affirmed),  deposes  and  says  that 
he  is  the  party  of  that  name  mentioned  in  the  foregoing  notice  of  op- 
position, that  he  has  read  and  signed  the  same  and  knows  the  contents 
thereof,  and  that  the  same  is  true  of  his  own  knowledge,  except  as  to 
the  matters  therein  stated  to  be  alleged  upon  information  and  belief 
and  as  to  those  matters  he  believes  it  to  be  true. 

Richard  Roe. 

Subscribed  and  sworn  to  (or  affirmed)  before  me  this  23d  day  of 
June,  1906. 

[l.  s.]  Charles  Kingman, 

Notary  Public. 

(Official  title.) 

(13)  APPLICATION  FOR  CANCELLATION  OF  TRADE-MARK « 

To  the  Commissioner  of  Patents: 
In  the  matter  of  trade-mark  No.  1898,  registered  May  23,  1906,  by 

(Number  of  registration.)  (Date  of  registration.) 

Richard  Roe,  of  the  city  of  Portland,  county  of  Cumberland,  State  of 

(Name  of  registrant.)  (Residence  or  location  of  registrant.) 

Maine,  I,  John  Doe,  residing  at  No.  113  Fayette  street,  in  the  city  of 

(Name  of  party  applying  for  cancellation.)  (Residence  or  location  of  the  party 

Baltimore,  State  of  Maryland,  deem  myself  injured  by  said  registration 

applying  for  cancellation.) 

and  I  hereby  apply  for  the  cancellation  thereof. 
The  grounds  for  cancellation  are  as  follows: 

(Here  state  the  grounds  for  cancellation.) 

John  Doe. 

(Signature  of  party  applying  for  cancellation.) 

>  If  the  opposing  party  be  a  firm,  corporation,  or  association,  the  notice  of  opposition  should  be  modi- 
fied accordingly. 

'  If  the  party  applying  for  cancellation  be  a  firm,  corporation,  or  association,  the  application  for  the 
cancellation  should  be  modified  accordingly. 


38        [772]  Registration  of  Trade-Marks 

State  of  Maryland,      > 

City  of  Baltimore,    > 

John  Doe,  being  duly  sworn  (or  affirmed),  deposes  and  says  that  he 
is  the  party  of  that  name  mentioned  in  the  foregoing  appHcation  for 
cancellation,  that  he  has  read  and  signed  the  same  and  knows  the  con- 
tents thereof,  and  that  the  same  is  true  of  his  own  knowledge,  except 
as  to  the  matters  therein  stated  to  be  alleged  upon  information  and 
belief  and  as  to  those  matters  he  believes  it  to  be  true. 

John  Doe. 

Subscribed  and  sworn  to  (or  affirmed)  before  me  this  26th  day  of 
June,  1906. 

[l.  s.]  John  Jones, 

Notary  Public. 

(Official  title.) 

(14)  PETITION   FOR   RENEWAL 

To  the  Commissioner  of  Patents: 

John  Doe  herewith  submits  the  original  certificate  of  registration 

No. ,  granted  to on ,  and  requests  that  the  same 

be  renewed  in  accordance  with  the  provisions  of  section  12  of  the  trade- 
mark act  of  February  20,  1905. 

The  said  John  Doe  further  represents  that  he  is  the  registrant  ^  named 

in  said  certificate  No. ;  that  he  believes  himself  to  be  the  owner 

of  the  mark  set  forth  therein;  and  that  he  has  not  abandoned  the  use 
of  said  mark. 

John  Doe. 

(Signature  of  applicant.) 

'  If  petitioner  is  the  transferee  of  record  in  the  Patent  Office,  the  clause  "transferee  of  record  in  the 
Patent  Office  of  the  registrant"  should  be  substituted  for  "registrant";  if  the  legal  representative,  the 
clause  "legal  representative  of  the  registrant"  should  be  substituted  for  "registrant." 


The  Size  of  /he  sheet  must  5e 
exactIji/0x/5inzhed.See  ta/eSdt^^ 


-This  space  must  be  eiqfft tnc/ies- -*< 

[773] 


CLASSIFICATION  OF  MERCHANDISE  UNDER  THE 
ACT  OF  MAY  4,  1906 

1.  Raw  or  partly  prepared  materials. 

2.  Receptacles. 

3.  Baggage,  horse  equipments,  portfolios,  and  pocketbooka. 

4.  Abrasive,  detergent,  and  polishing  materials. 

5.  Adhesives. 

6.  Chemicals,  medicines,  and  pharmaceutical  preparations. 

7.  Cordage. 

8.  Smokers'  articles,  not  including  tobacco  products. 

9.  Explosives,  firearms,  equipments,  and  projectiles. 

10.  Fertilizers. 

11.  Inks  and  inking  materials. 

12.  Construction  materials. 

13.  Hardware  and  plumbing  and  steam-fitting  supplies. 

14.  Metals  and  metal  castings  and  forgings. 

15.  Oils  and  greaces. 

16.  Paints  and  painters'  materials. 

17.  Tobacco  products. 

19.  Vehicles,  not  including  engines. 

20.  Linoleum  and  oiled  cloth. 

21.  Electrical  apparatus,  machines,  and  supplies. 

22.  Games,  toys,  and  sporting  goods. 

23.  Cutlery,  machinery,  and  tools,  and  parts  thereof. 

24.  Laundry  appliances  and  machines. 

25.  Locks  and  safes. 

26.  Measuring  and  scientific  appliances. 

27.  Horological  instruments. 

28.  Jewelry  and  precious-metal  ware. 

29.  Brooms,  brushes,  and  dusters. 

30.  Crockery,  earthenware,  and  porcelain. 

31.  Filters  and  refrigerators. 

32.  Furniture  and  upholstery. 

33.  Glassware. 

34.  Heating,  lighting,  and  ventilating  apparatus,  not  including  electrical  apparatus. 

35.  Belting,  hose,  machinery  packing,  and  nonmetallic  tires. 

36.  Musical  instruments  and  supplies. 

37.  Paper  and  stationery. 

38.  Prints  and  publications. 

39.  Clothing. 

40.  Fancy  goods,  furnishings,  and  notions. 

41.  Canes,  parasols,  and  umbrellas. 

42.  Knitted,  netted,  and  textile  fabrics. 

43.  Thread  and  yarn. 

44.  Dental,  medical,  and  surgical  appliances. 

45.  Beverages,  nonalcoholic. 

46.  Foods  and  ingredients  of  foods. 

47.  Wines. 

48.  Malt  extracts  and  liquors. 

49.  Distilled  alcoholic  liquors. 

50.  Merchandise  not  otherwise  classified. 

Note. — Class  18  was  abolished  February  24,  1909. 


[775]        39 


INDEXES 


INDEX  TO  TRADE-MARK  STATUTES 

(Numbers  in  italics  refer  to  sections  of  the  act  of  May  4,  1906J 


Subject. 


Abandoned  trade-marks,  action  may  not  be  brought  on .  .  . 
Action : 

By  Commissioner  of  Patents  on  application 

For  damages 

For  an  injunction 

Jurisdiction  of  United  States  courts  in  an 

When  barred 

Act  of  1881,  rights  of  registrants  under 

"Affixed"  defined 

Amendments  to  apphcations  filed  under  act  of  1881 

Appeals: 

Fees  for 

To  the  Commissioner  of  Patents 

To  the  Court  of  Appeals  of  the  District  of  Columbia.  . 

Patent  practice  and  procedure  to  govern 

Appellate  jurisdiction  of  United  States  courts 

Applicant: 

"Applicants"  defined 

Citizenship  of,  to  be  recited 

Domicile  of,  to  be  recited 

Location  of,  to  be  recited 

Name  of,  to  be  recited 

Statement  of,  to  recite  what 

Who  may  apply  for  registration 

Apphcations: 

Action  on  same  by  the  Commissioner  of  Patents 

Conflicting 

Date  of,  in  foreign  country  must  be  stated  when 

Examination  of 

Fees  on  filing 

Filed  under  the  act  of  1881  may  be  amended 

Length  of  time  of  use  of  mark  to  be  recited  in 

May  be  assigned 

May  contain  a  description  of  the  mark,  when 

May  include  any  or  all  goods  comprised  in  a  single  class 
upon  which  trade-mark  is  used 

Must  be  addressed  to  the  Commissioner  of  Patents.  . . 

Must  be  accompanied  by  a  drawing 

Must  be  accompanied  by  a  written  declaration 

Must  be  accompanied  by  specimens  of  the  trade-mark 

Must  be  filed  in  the  Patent  Office 

Must  be  in  writing 

Must  be  signed  by  the  applicant 

Must  contain  a  description  of  the  mark,  when 

Must  recite  what 

Must  state  how  trade-mark  is  applied  or  affixed  to  the 
goods 


Sections. 


21 

11 

6 

7 

16,  19,  25 

10,  12 

19 

10 

17,  18 
19,  20 

i   10,  11 

21,28 

11,  12 

12,30 

9,  13 

29 

13 

14,24 

9,  12 

8,  14 

8,9 

7,  8,  13 

8,9 

9 

8 

9 

8 

17 

10 

29 

13 

1 

5 

1 

5 

1 

5 

1 

5 

1 

5 

1 

5 

6 

7 

7 

8 

2 

5 

6 

7 

1,14 

5,9 

14,24 

9,  12 

1 

5 

10 

8 

1 

5 

2 

13 

1 

5 

1 

5 

2 

5 

1 

5 

1 

5 

1 

5 

1 

5 

1 

5 

1 

5 

1 

5 

[777] 


41 


42        [778]  Indexes 

Index  to  trade-mark  statutes — Continued 


Subject. 


Article,  if  injurious,  an  action  for  damages  or  injunction  is 

barred  

Assignments: 

Applications  for  registration  may  be  assigned 

P'ees  for  recording 

Must  be  acknowledged  according  to  laws  of  country  or 

State  in  which  executed 

Must  be  in  connection  with  the  good  will  of  the  business 

Must  be  in  writing 

Record  of  assignments  to  be  kept  in  the  Patent  Office.  . 
Shall  be  void  unless  recorded  in  the  Patent  Office  within 

3  months 

Trade-marks  may  be  assigned 

Attorney  may  file  opposition 

Bars: 

To  action  for  damages  or  injunction 

To  registration 

Business,  if  unlawful,  bars  an  action  for  damages  or  injunc- 
tion   

Cancellation,  proceedings  for 

Certificates  of  registration: 

In  case  of  foreign  registration,  shall  cease  when  the 

foreign  registration  expires 

Issued  under  the  act  of  1881,  may  be  renewed  under  the 

act  of  Feb.  20,  1905 

Issued  under  the  act  of  1881,  shall  remain  in  force.  . 

May  be  canceled . 

May  be  issued  to  foreign  applicants  having  manufac- 
turing establishments  within  the  territory  of  the 
United  States  upon  the  same  conditions  as  to  resi 

dents  of  the  United  States , 

May  be  issued  to  the  assignee 

May  be  renewed 

Shall  bear  the  seal  of  the  Patent  Office 

Shall  be  signed  by  the  Commissioner  of  Patents 

Shall  not  be  issued  to  foreign  apphcants  until  they  have 
obtained  registration  in  country  of  residence  unless 
applicant  has  a  manufacturing  establishment  within 

the  United  States 

Shall  remain  in  force  not  more  than  20  years 

Shall  state  date  of  application 

Use  of  copies  of,  in  court  as  evidence 

Citizenship: 

As  affecting  right  to  register 

Of  applicant  to  be  recited 

Class  of  merchandise  to  be  recited  in  application ....... 

Classes  of  merchandise  to  be  established  by  commissioner 

Coats  of  arms  not  registrable 

Commerce: 

Between  States 

Foreign  applicants  need  not  state  that  the  trade-mark 
has  been  used  in  commerce  with  the  United  States  or 
among  the  States  thereof,  unless  application  is  made 

under  sec.  3  of  the  act  of  May  4,  1906 

With  foreign  nations 

With  Indian  tribes 

Commissioner: 

Action  on  application 

Appeals  to 

Jurisdiction  of,  to  cancel  registrations 

May  refuse  to  register  interfering  marks,  when 


Sections. 

Pages. 

21 

11 

10 
10 

8 
8 

10 
10 
10 
10 

8 
8 
8 
8 

10 
10 

6 

8 
8 
7 

21,28 
1,  2,  4,  5 

11,  12 

5,6 

21 
13,22 

11 
9,21 

12 

9 

12 
12,30 
13,22 

9 
9,  13 
9,  11 

S 
11 
12 
11 
11 

13 
9 
9 
9 
9 

3,4 
12 
11 
11 

13,6 
9 
9 
9 

1 
1 
1 

5 

5 
5 
5 
13 
6 

2,3 
1 
1 

5,  13 
5 
5 

6 

8 

13,22 

7 

7 

8 

9,  11 

8 

Indexes 
Index  to  trade-mark  statutes — Continued 


[779]        43 


Subject. 


Commissioner — Continued. 

To  decide  presumptive  lawfulness  of  claim 

To  prescribe  regulations  for  registration 

To  sign  the  certificates  of  registration 

Common-law  and  equitable  rights  not  abridged  by  statute 

Conflicting  applications 

Confusion  of  the  public  mind  by  similarity  of  marks  bars 

registration 

Contempt,  action  for  violating  injunction. 

Convention  with  a  foreign  power  as  conferring  the  right  to 

register • 

Copies: 

Of  actual  trade-mark  or  facsimiles  required  from  ap- 
plicant   

Of  printed  statements  to  be  kept  of  record 

Of  records  of  injunction  proceedings  furnished  to  courts 
applying  for  same 

Of  publications,  prices 

Of  records  under  official  seal  to  be  evidence 

Copying  and  using  registered  trade-marks: 

Damages  for 

Restraint  of 

Counterfeiting,  damages  for 

Courts  of  the  United  States,  jurisdiction  of 


Damages: 

Action  for,  when  barred 

For  affixing  fraudulent  trade-mark  to  merchandise.  . 

For  false  or  fraudulent  registration 

For  wrongful  use  of  registered  trade-marks 

May  be  increased 

Deceit  of  the  public: 

Action  to  defend  trade-mark  used  in,  not  maintainable 

By  similarity  in  marks,  bars  registration 

Deceptive  trade-marks,  action  under,  may  not  be  brought 
Declaration: 

May  be  verified,  before  whom 

Must  be  in  writing 

Must  be  verified,  by  whom 

Must  contain  what 

For  foreign  applicants 

Under  lO-year  proviso 

When  false  or  fraudulent,  damages  for 

Definitions  of  "afl5xed,"  "applicant,"  "owner,"  "person," 
"registrant,"  "States,"  "trade-marks,"  "United  States" 
Description: 

Must  truly  describe  the  mark 

Of  the  goods  required 

Of  the  mark  required  or  permitted,  when 

Descriptive  trade-marks  not  registrable 

Destruction  of  infringing  trade-marks 

Domicile  of  applicant  must  be  recited  in  the  application.  . . 

Drawing  of  the  trade-mark  required . 

Duration  of  the  certificate  of  registration 

Emblem  of  fraternal  society  not  registrable 

Equity,  aggrieved  parties  may  resort  to 


Sections. 


Evidence: 

Copies  under  seal  to  be  received  as . 

Of  ownership,  registration  to  be  prima  facie 
Of  registry 


6 
26 
11 
23 

7 

5 
20 

1,4 


Pages. 


7 
12 

9 
11 

8 

6 
11 

5,6 


1 

5 

11 

9 

20 

11 

14 

9 

11 

9 

16,  19 

10 

19 

10 

16 

10 

16,17 
18,  19 

t       « 

21,28 

11,  12 

16 

10 

25 

12 

16,  19 

10 

16,  19 

10 

21 

11 

5 

6 

21 

11 

2 

5 

2 

5 

2 

5 

2 

5 

2 

5 

5 

7 

25 

12 

29 

13 

2 

5 

1 

5 

1 

5 

5 

6 

20 

11 

1 

5 

1 

5 

12 

9 

5 

6 

17,  19 
22,23 

1   10,  11 

11 

9 

16 

10 

11 

9 

44        [780]  Indexes 

Index  to  trade-mark  statutes — Continued 


Subject. 


Examination  of  applications: 

Applicant  to  be  notified  of  the  result  of 

Commissioner  of  Patents  to  cause 

Facsimiles  of  trade-marks,  when  to  be  filed 

False  registration,  damages  for 

Fees: 

Additional  fee  not  required  for  applications  pending  at 

the  date  of  passage  of  the  act  of  Feb.  20,  1905 

For  copies 

For  recording  assignments 

For  registration  or  renewal 

If  paid  by  mistake,  may  be  refunded 

On  appeal  to  the  Commissioner  of  Patents 

On  filing  notice  of  opposition 

Flags  or  coats  of  arms  not  registrable 

Foreigners: 

Entitled  to  date  of  application  in  country  of  residence 

in  certain  cases 

Having    a    manufacturing    establishment    within    the 

United  States  entitled  to  registration  when 

Must  designate  representative  in  the  United  States.  .  . 
Must  first  register  in  country  of  residence  unless  ap- 
plication is  made  under  sec.  3  of  the  act  of  May  4, 

1900 

Must  give  date  of  registration  in  country  of  residence, 
or  date  of  application  therefor,  unless  application  is 

made  under  sec.  3  of  the  act  of  May  4,  1906 

Must  reside  in  a  country  affording  similar  privileges  to 
the  citizens  of  the  United  States  unless  application  is 

made  under  sec.  3  of  the  act  of  May  4,  1906 

Need  not  state  that  mark  has  been  used  in  commerce 
with  the  United  States  or  among  the  States  thereof 
unless  application  is  made  under  sec.  3  of  the  act  of 

May  4,  1906 

Notices  for,  may  be  served  on  their  representatives  in 

the  United  States 

When  entitled  to  register , 

Foreign  nations,  registration  of  trade-mark  used  in  com 

merce  with 

Foreign  powers,  conventions  or  treaties  with,  and  laws  of,  as 

affecting  right  of  registration 

Former  rights  and  remedies  preserved 

Fraternal  society,  insignia  of,  not  registrable 

Fraud  in  obtaining  registration  bars  an  action 

Fraudulent: 

Declaration  and  registration,  damages  for 

Trade-marks,  damages  for  affixing  same  to  merchandise 

Geographical  terms  not  registrable 

Goods: 

Particular  description  of 

Comprised  in  each  class  to  be  determined  by  commis- 
sioner   

To  be  recited 

Identity  with  other  trade-marks,  bars  registration  when. . 

Imitation  of  registered  trade-marks,  penalty  for 

Immoral  or  scandalous  matter  not  registrable 

Importation  of  articles  of  merchandise  bearing  unlawful 

trade-marks  prohibited 

Inrlian  tribes,  registration  of  trade-marks  used  in  commerce 

with 

Infringement,  remedy  for 


Sections. 


6 

7 

6 

7 

1 

5 

25 

12 

14 

9 

14 

9 

14 

9 

1,14 

5,9 

15 

10 

8,  14 

8,9 

14 

9 

5 

6 

2,3,  4 
2,3 
3,4 

2,3 


Pagea. 


13 
6 


5,  13,  6 
5,  13 
13,6 

5,  13 


3 

1,  2,  3,  4 

6 
5,  13,  6 

1 

5 

1,4 

12,23 

5 

21 

5,  6 

9,  11 

6 

11 

25 

16 

5 

12 

10 

6 

1 

5 

£ 
1 

5 

16,  19 
5 

13 
5 
7 

10 
6 

27 

12 

1 
16,  19 

5 
10 

Indexes 

Index  to  trade-mark  statutes — Continued 


[781] 


45 


Subject. 


Injunction: 

Action  for,  when  barred 

Against  the  wrongful  use  of  registered  trade-mark. 

May  be  enforced  by  proceedings  to  punish  for  contempt 

May  be  enforced  in  any  jurisdiction 

Notice  of,  may  be  served  wherever  defendant  can  be 

found  in  the  United  States 

Injurious  articles,  action  may  not  be  brought  on  trade- 
marks used  on 

Insignia  of  fraternal  society  not  registrable 

Interferences: 

Examiner  in  charge  of,  has  jurisdiction  over — 

Cancellations 

Interferences 

Oppositions 

When  declared 

Interfering  trade-marks,  suits,  and  proceedings  in  equity . . . 
Issue  of  certificates  of  registration 

To  assignees 

Jurisdiction : 

Of  the  Commissioner  of  Patents 

Of  the  examiner  in  charge  of  interferences 

Original  and  appellate,  of  the  United  States  courts.  . . 

Lawfulness  of  claim  to  trade-mark  to  be  decided  by  the 

Commissioner  of  Patents 

Lawful  trade-marks,  or  those  used  lawfully,  alone  regis- 
trable  

Length  of  time  of  use  of  trade-mark  to  be  recited 

List  of  trade-marks  to  be  published  in  the  Official  Gazette .  . 

Location  of  applicant  to  be  specified 

Merchandise  bearing  unlawful   trade-marks,   importation 

prohibited 

Merchandise: 

Class  of,  to  be  recited 

Classification  of,  to  be  established  by  Commissioner  of 

Patents 

Mistake,  or  confusion  in  the  public  mind  caused  by  simi- 
larity of  trade-marks,  bars  registration 

Mode  of  affixing  trade-mark  to  be  recited 

Name  of  apphcant: 

Not  registrable,  except  on  certain  conditions 

To  be  specified  in  the  application 

Notice  of  opposition,  and  of  the  grounds  therefor,  to  be 

given  to  applicants 

Notice  of  registration: 

Registrants  must  give 

Form  of 

Notice  for  foreign  applicants  may  be  served  on  their  repre- 
sentatives in  the  United  States 

Oath  to  declaration  may  be  made  before  whom 

Opposition : 

May  be  filed  by  attorney,  but  if  so  filed  must  be  verified 

by  opposer  within  reasonable  time 

May  be  made  by  any  person  who  believes  he  would  be 

damaged  by  registration 

Must  be  accompanied  by  fee 

Notice  of  grounds  of  opposition  shall  be  given  to  ap- 
plicants   

Notice  of,  must  be  filed  within  30  days  after  publication 


Sections. 


Pages. 


21,28 
19 
20 
20 

11,  12 
10 
11 
11 

20 

11 

21 

5 

11 
6 

13 
7 
7 
7 

22 
6,  11 

11 

9 
8 
8 
8 
11 
7,9 
9 

8,  13 

7,  13 

9,  16,  17 

18,  19 

20,  22 

8,9 
8,9 

8,  10,  11 

6 

7 

5 

1 
6 

1 

6 
5 

7 
5 

27 

12 

1 

5 

2 

13 

5 
1 

6 

5 

5 

1 

6 
5 

7 

8 

28 
28 

12 
12 

3 
2 

6 
5 

6 

6 
14 

7 
6 
7 
9 

7 
6 

8 
7 

46        [782]  Indexes 

Index  to  trade-mark  statutes — Continued 


Subject. 


Sections. 


Oppositions — Continued 

Notice  of,  must  be  verified 

Proceedings  under 

Publication  of  trade-marks  in  Official  Gazette  before 

roRistration  to  enable  opposition  to  be  made 

"Owner"  defined 

Ownership,  registration  to  be  prima  facie  evidence  of 

Particular  description  of  goods  comprised  in  each  class  to  be 

determined  by  Commissioner  of  Patents 

Penalty: 

For  false  or  fraudulent  registration 

For  imitation  of  trade-mark 

" Person"  defined 

Petition,  to  contain  what 

Portraits  of  living  individuals  not  registrable  without  their 

consent  in  writing 

Printed  copies  of  statements  to  be  kept  of  record 

Printed  copies  of  trade-marks  to  be  furnished  by  the  office 

Profits  may  be  recovered 

Publication  of  trade-marks  in  the  Official  Gazette 

Publications,  prices  of  copies  of 

Recording: 

Fees  for 

Of  assignments 

Records  of  trade-marks,  statements,  declarations,  etc.,  to  be 


kept. 


Refunding  of  fees 

Refusal  of  an  application 

"Registrant"  defined 

Registrants  under  the  act  of  1881,  rights  of 

Registration : 

Authorized  by 

Bars  to 

By  residents  of  foreign  countries , 

Certificates  of — 

Duration 

How  and  when  issued 

Renewal  of , 

Use  of,  in  courts  as  evidence 

Fees  for 

How  effected , 

Marks  not  registrable 

Obtained  by  false  or  fraudulent  representation,  dam 

ages  for 

Of  marks  used  10  years  prior  to  Feb.  20,  1905 

Records  of,  to  be  kept 

Renewal  of,  can  be  made,  when 

Right  to — 

As  affected  by  citizenship  of  applicant 

As  conferred  by  treaty  or  convention  with  a  for- 
eign power  or  by  the  laws  of  a  foreign  country 
Rules  for,  to  be  prescribed  by  the  Commissioner  of 

Patents 

To  be  prima  facie  evidence  of  ownership 

Use  in  foreign  or  Indian  or  interstate  commerce,  a  pre- 
requisite to 

Who  is  entitled  to 

Regulations  and  rules  to  be  prescribed  by  the  Commissioner 
of  Patents 


Remedies  for  infringements . 


16, 


6 
7 

6 
29 
16 


25 

19,  20 
29 

1 

5 

11 

11,  14 

19 

6 
14 

14 
10 

11 
15 
6,7 
29 
12 

1 

2,4,5 
1,3,3 

12 

6,  11 

12 

11,  16 

14 

1,2 

5 

25 

5 

11 

12 

1,4,3 

1,4 

26 
16 

1 
1,4 

26 
16,  19 

20,  23 


Pages. 


7 
8 

7 
13 
10 

13 

12 

10,  11 

13 

5 

6 
9 
9 
10 
7 
9 

9 

8 

9 
10 

7,8 

13 

9 

5 

5,6 

5,  6,  13 

9 
7,9 
9 
9,  10 
9 
5 
6 

12 
6 
9 
9 

5,  6,  13 

5,6 

12 
10 

5 

5,6 

12 

10,  11 


Indexes 

Index  to  trade-mark  statutes — Continued 


[783] 


47 


Subject. 


Renewal  of  certificate  of  registration 

Must  be  made  not  more  than  6  months  prior  to  expira- 
tion   

Who  may  request 

Representatives  in  the  United  States,  foreign   applicants 

must  designate 

Reproduction  and  use  of  registered  trade-marks,  penalty  for 

Resemblance  to  other  marks  must  be  avoided 

Residence  of  applicants  required 

Restrictions: 

On  actions  for  damages  or  an  injunction 

On  actions  for  infringement 

On  registration 

Review  by  Commissioner  of  Patents  of  adverse  decision.. . 
Right  to  use  the  trade-mark  in  the  United  States  must  be- 
long exclusively  to  the  applicant 

Rights  at  common  law  or  equity  not  abridged 

Rules  and  regulations  to  be  prescribed  by  the  Commis- 
sioner of  Patents 

Scandalous  or  immoral  matter  not  registrable 

Schedule  of  fees 

Similarity  to  other  trade-marks,  bars  registration,  when. . 

Specimens  of  the  trade-mark  required 

Statement  of  applicant: 

To  recite  what 

Recording  of 

Statements,  printed  copies  of,  to  be  kept  of  record 

"States"  defined 

States,  registration  of  trade-marks  used  in  commerce  between 
10  years'  use  prior  to  Feb.  20,  1905,  permits  registration  of 

certain  marks 

Term  of  registration: 

Duration  of 

Limitation  of 

Renewal  of 

Time  of  use  to  be  recited 

"  Trade-mark  "  defined 

Trade-marks  to  be  published  in  Official  Gazette 

Transfers  of  the  right  of  use,  how  regulated 

Treasury  Department,  deposit  of  trade-mark  in 

Treaties,  as  conferring  the  right  of  registration 

United  States: 

Citizens  of,  may  obtain  registration,  when 


Sections. 


Courts  of,  to  have  jurisdiction,  when 

Definition  of  the  term  "United  States"  as  used  in  the 

act  of  Feb.  20,  1905 

Unlawful  business,  use  of  trade-marks  in,  bars  an  action. . . 
Use: 

If  in  an  unlawful  business,  bars  an  action 

If  wrongful,  common-law  and  equitable  rights  unim- 
paired   

Length  of  time  of,  to  be  recited 

Mode  of,  to  be  recited 

Right  of,  in  the  United  States,  must  be  exclusive  with 

the  applicant 

Right  of,  transfers  of 

Unlawful,  of  trade-marks,  damages  or  injunctions.  .  .  . 

Verification  of  declaration,  how  and  by  whom  made 

Writ  of  certiorari  may  be  granted  by  the  Supreme  Court  of 
the  United  States 


12 

12 
12 


16,  19,  20 
5 
1 

21,28 

21,28 
5 
9 

2 
23 

26 

5 

14 

5 
1 

1 
11 
11 
29 

1 


12 
12 
12 

1 
29 

6 

10 

27 

1,4 

1 

[       16,  17 

1       18,  19 

29 
21 

21 

23 
1 
1 

2 

10 

16,  19,  20 

2 

18 


9 
9 

6 

10,  11 

6 
5 

11,  12 
11,  12 

6 


5 
11 

12 
6 
9 
6 
5 

5 
9 
9 
13 
5 


9 
9 
9 
5 

13 
7 
8 

12 
5,6 

5 
10 

13 
11 

11 

11 
5 
5 

5 

8 

10,  11 

5 

10 


48 


[784] 


Indexes 


INDEX  TO   TRADE-MARK  RULES 


Subjects. 


Abandoned  applicationa 

Abandoned  trade-marks 

Act  of  1881,  rights  of  registrants  under 

Action  of  the  office  to  be  directed  to  the  merits 

Additions  to  papers  not  permitted 

Advertising  stamp  of  attorneys  not  permitted  on  drawings 
Allowance: 

Amendments  after 

Notice  of 

Amendments: 

After  allowance 

Form  of 

In  general 

New  matter  not  permitted  in 

To  amendment,  form  of 

To  applications  filed  under  act  of  1881 

Will  give  such  applications  new  serial  numbers  and 
dates  of  filing 

To  declaration,  will  not  be  permitted 

To  rules,  will  be  published  in  the  Official  Gazette .... 

To  statement,  when  permitted 

Appeals: 

To  the  Commissioner  of  Patents 

To  the  Court  of  Appeals  of  the  District  of  Columbia.  . 
Applicant: 

Foreign,  must  file  certified  copy  of  foreign  registration 
in  certain  cases 

May  prosecute  his  own  case 

Should  not  correspond  with  office  if  he  has  an  attorney 
Applications: 

Abandoned 

Are  preserved  in  secrecy 

Conflicting,  practice,  etc 

Date  of,  in  foreign  country,  must  be  stated,  when 

Examination  of 

Fee  on  filing 

Filed  under  act  of  1881  may  be  amended 

Will  be  given  new  serial  numbers  and  dates  of  filing 
under  the  act  of  Feb.  20,  1905 

May  be  assigned 

May  include  all  goods  comprised  in  a  single  class  upon 
which  trade-mark  is  used 

Suspension  of 

To  contain  what,  form  of 

Assignments:  ' 

Fees  for  recording 

Must  be  recorded  within  3  months 

Orders  for  copies  of,  must  give  liber  and  page  of  record 

Provisions  regulating 

Attendance  of  applicants  in  person  not  necessary .... 
Attorneys: 

Correspondence  will  be  held  with 

Disbarment  of 

In  general 

May  not  act  as  notary 


Rules. 

Pagea. 

f        45  (a) 

1 

22,26 

[    57  (a-d) 

1 

19 

17 

61 

26 

39 

22 

42 

22 

36(7) 

21 

44 

22 

40 

22 

44 

22 

42 

22 

f       41,  42 
43,  44,  45 

22 

41 

22 

43 

22 

26 

19 

26 

19 

35 

21 

74 

29 

41 

22 

66 

25 

67 

25 

17 

17 

11 

16 

7,8 

15 

1       45(a) 
1    57  (a-d) 

22,26 

25 

19 

f       46,  47 
\  48,  49,  50 

1 
f 

23,24 

33 

20 

38,  39,  40 

21,22 

22  if),  69 

18,28 

26 

19 

26 

19 

63 

27 

30 

20 

45  (b-d) 

22-23 

22 

18 

69 

28 

64 

27 

67 

27 

63,  64,  65 

27 

6 

15 

7 

15 

15 

16 

1        11,  12 
i 13, 14, 15 

1 
[ 

16 

34 

20 

Indexes 
Index  to  trade-mark  rules — Continued 


[785] 


49 


Subject. 


Attorneys — Registration  of 

Stamp  of,  not  permitted  on  face  of  the  drawing 

Substitution  of 

Bars  to  registration 

Cancellation,  proceedings  for 

Certificate  of  registration: 

Date  of 

Duration  of 

Issue  of 

Issued  under  act  of  1881,  shall  remain  in  force 

May  be  renewed  imder  act  of  Feb.  20,  1905 ..... 

May  be  issued  to  an  assignee 

May  be  canceled 

Renewal  of 

Will  not  be  issued  to  foreign  applicants  until  they  have 
obtained  registration  in  country  of  residence,  except 
as  provided  by  sec.  3  of  the  act  of  May  4,  1906 .... 

Charges  for  express,  postage,  etc.,  must  be  prepaid 

Citizenship: 

As  affecting  right  to  register 

Of  applicant  to  be  recited 

Class  of  merchandise  to  be  recited  in  application 

Coats  of  arms  not  registrable 

Commerce: 

Between  States 

Foreign  apphcants  need  not  state  that  the  trade-mark 
has  been  used  in  commerce  with  the  United  States  or 
among  the  States  thereof,  unless  application  is  made 

under  sec.  3  of  the  act  of  May  4,  1906 

With  foreign  nations 

With  Indian  tribes 

Commissioner  of  Patents: 

Appeals  to 

Communications  to  be  addressed  to 

Petitions  to 

No  fee  required  for 

Communications.    (See  Correspondence.) 

Conflicting  applications,  interferences,  patent  practice  to 

govern  in 

Copies  of  actual  trade-mark  required  from  applicant 

Copies  of  publications,  prices  of 

Copy  of  foreign  registration  required  of  foreign  applicants 
unless  application  is  made  under  sec.  3  of  the  act  of  May  4, 

1906 

Corporations  must  recite  under  the  laws  of  what  State  or 

nation  incorporated 

Corresp>ondence : 

Charges  for  postage,  etc.,  must  be  prepaid 

Checks,  drafts,  etc.,  to  be  drawn  to  the  Commissioner's 

order 

Decorum  and  courtesy  required 

Double  correspondence  not  permitted 

Letters  relating  to  application  should  state  what 

Letters  relating  to  registered  marks  should  state  what 
Must  be  addressed  to  the  Commissioner  of  Patents. . . 

Must  be  in  writing 

OflBce  can  not  expound  the  law,  etc 

Personal  attendance  unnecessary 

Separate  letter  for  each  subject  of  inquiry  required .  .  . 
Will  be  held  with  the  attorney 


Rules. 


11 

16 

36  (7) 

21 

13 

16 

17,  19 

17 

f   52,  53 
1   54, 55 

}  24,  25,  26 

40 

22 

59 

26 

40,58 

22,26 

61 

26 

61 

26 

65 

27 

52 

24 

60 

26 

18,62 

17,27 

10 

16 

16 

16 

22(6) 

18 

22(6) 

18 

19 

17 

19 


Pages. 


17 


18,33 

17,20 

19 

17 

19 

17 

56 

25 

3 

15 

56 

25 

56 

26 

46 

23 

22  (e) 

18 

69 

28 

17 

17 

22  (6) 

18 

10 

16 

3 

15 

2 

15 

8 

15 

5 

15 

5 

15 

3 

15 

1 

15 

9 

15 

6 

15 

4 

15 

7 

15 

50        [786]  Indexes 

Index  to  trade-mark  rules — Continued 


Subject. 


Courtesy  and  decorum  required  of  applicants  and  attorneys 

Date  of  certificate  of  registration 

Deceptive  trade-marks  not  registrable 

Declaration: 

In  general 

May  not  be  amended 

Requisites  of 

For  foreign  applicants 

Under  10-year  proviso 

To  be  verified  before  whom 

Decorum  required  from  applicants  and  attorneys 

Description  of  the  trade-mark  itself  required,  when  (see 

Statute) 

Descriptive  marks  not  registrable 

Disbarment  of  attorneys 

Domicile  to  be  recited  (see  statute) 

Double  correspondence  not  allowed 

Drawing: 

Furnished  by  the  office 

Must  not  be  folded 

Requisites  of 

Duration  of  term  registration 

Emblem  of  fraternal  society  not  registrable 

English  language  to  be  used  in  the  application  papers  and 

assignments 

Erasures  by  applicant  or  attorney  not  permitted 

Examination : 

Applicants  will  be  notified  of  the  result  of 

Of  appUcations -.••••: 

Of  applications  for  registration  of  trade-marks  pre- 
viously registered  under  act  of  1881 

Examiner  in  charge  of  trade-marks,  original  jurisdiction  of 

proceedings  before 

Express  charges  must  be  prepaid 

Facsimile  of  trade-mark,  when  to  be  filed 

Fees : 

Additional  fee  not  required  for  applications  pending  at 
the  date  of  the  passage  of  act  of  Feb.  20,  1905 .  .  . 

Now  paid 

Refunded,  when 

Schedule  of 

Flags  or  coats  of  arms  not  registrable 

Foreigners: 

Entitled  to  date  of  application  in  country  of  residence 

in  certain  cases 

Having    manufacturing    establishments    within     the 

United  States  may  obtain  registration  when 

Must  designate  representative  in  United  States 

Must  file  certified  copy  of  foreign  registration  unless  ap- 
plication is  made  under  sec.  3  of  the  act  of  May  4, 

1906 

Must  first  register  in  country  of  residence  unless  appli- 
cation is  made  under  sec.  3  of  the  act  of  May  4,  1906 
Must  give  date  of  registration  in  country  of  residence  or 
date  of  appUcation   therefor  unless  application  is 

made  under  sec.  3  of  the  act  of  May  4,  1906 

Must  reside  in  a  country  affording  similar  privileges  to 
the  citissens  of  the  United  States  unless  application  is 

made  under  sec.  3  of  the  act  of  May  4,  1906 

Need  not  state  that  mark  has  been  used  in  commerce 


Rules. 


2 
40 
19 

15,31,32 

33,  34,  35 

35 

31,  32,  33 

33 

32 

34 

2 

22  (b) 
19 
15 

22  (6) 


37 
36  (6) 
36 
59 
19 

23,63 

42 

38 
38,  39,  40 

26 

38 

10 

22  (e) 


26 
3,  70,  71 
72 
69 
19 


27 


Pages. 


15 
22 
17 

16, 20,  21 

21 
20 
20 
20 
20 
15 

18 
17 
16 
18 
15 

21 
21 
21 
26 
17 

18,27 

22 

21 
21,22 

19 

21 
16 
18 


19 

15,28 
28 
28 
17 


19 


18 
28 

17 
19 

17,18 

17 

18,62 

17,27 

33 

20 

17 

7 
17 

Indexes 

Index  to  trade-mark  rules — Continued 


[787]        51 


Subject. 


Foreigners — Continued . 

with  the  United  States  or  among  the  States  thereof 
unless  application  is  made  under  sec.  3  of  the  act  of 

May  4,  1906 

Notices  for,  may  be  served  on  their  representatives  in 

the  United  States 

When  entitled  to  register 

Foreign  nations,  registration  of  trade-marks  used  in  com- 
merce with 

Fraternal  society,  emblem  of,  not  registrable 

Geographical  terms  not  registrable 

Goods,  particular  description  of,  to  be  recited  (see  Statute) 
Goods,  to  be  included  in  a  single  registration,  must  be  com 

prised  in  a  single  class 

Immoral  or  scandalous  matter  not  registrable 

Indian  tribes,  registration  of  trade-marks  used  in  commerce 

with 

Information  of  certain  kinds  not  furnished 

Injurious  articles,  trade-marks  used  on,  not  registrable. . 
Insertions  by  applicants  or  attorneys  not  permitted .... 
Interferences: 

Commissioner's  attention  invited  to — 

Irregularity  in  declaring 

Matter  not  relating  to  priority 

Statutory  bar  to  registration 

Examiner  in  charge  of,  has  jurisdiction  over — 

Cancellations 

Interferences 

Oppositions 

From  decision  of  examiner  of  trade-mairks,  appeal  may 

be  taken 

Motion  to  dissolve,  when  made 

Decision  of  examiner  of  trade-marks  binding  upon 

examiner  of  interferences 

Motion  to  shift  burden  of  proof — 

Made  before,  and  determined  by,  the  examiner  of 

interferences 

Motion  to  stay  proceedings 

Not  delayed  by  failure  to  prepare  for 

Preliminary  questions  must  be  settled  by  examiner  of 

trade-marks  before  declaration 

Preparation  for 

Publication  of  trade-mark  must  be  made  in  the  Official 

Gazette  before  interference  is  declared 

Suspension  of  interference  for  consideration 

Trade-marks  must  have  been  decided  to  be  registrable 

When  declared,  practice 

Issue  of  certificates  of  registration 

To  assignee 

Lawful  trade-marks,  or  those  used  lawfully,  alone  regis- 
trable  

Length  of  time  used  to  be  recited  (see  Statute) 

Letters,  rules  and  regulations  governing.  (See  Correspond- 
ence.) 

List  of  trade-marks  to  be  published  in  the  Official  Gazette 

Merchandise,  class  of,  to  be  recited  (see  Statute) 

Merits,  office  action  to  be  directed  to  the 

Mode  of  applying  and  affixing  trade-mark  to  the  goods  to  be 
recited  (see  Statute) 

Mutilation  of  papers  not  permitted 


Rules. 


17 


50 


Pages. 


17 


29 

19 

17 

18 

17 

19 

17 

19 

17 

19 

17 

22(6) 

18 

30 

19 

19 

17 

19 

17 

9 

25 

15 

19 

19 

17 

42 

22 

48 

23 

48 

23 

48 

23 

52 

54 

24 

25 

46 

23 

51 

54 

24 

25 

48 

23 

49 

24 

24 


49 

24 

49 

24 

47 

23 

47 

23 

47 

23 

47 

23 

48 

23 

47 

23 

46,47 
48, 49,  50 

1   23, 24 

58,62 

26,27 

65 

27 

1,4 

5,6 

19 

17 

22(6) 

18 

68 

27 

22(6) 

18 

39 

22 

22(6) 
42 

18 
22 

62        [788]  Indexes 

Index  to  trade-mark  rules — Continued 


Subject. 


Name  of  applicant  not  registrable,  except  under  certain  con- 
ditions   

Name  of  applicant  will  be  made  uniform 

Name  of  applicant  to  be  recited  (see  Statute) 

New  matter  not  permitted  by  amendment 

Notary,  attorney  may  not  act  as 

Notice  of  allowance 

Notice  of  opposition,  and  of  the  grounds  therefor,  to  be 

given  to  applicants 

Notice  of  registration: 

Form  of 

Registrants  must  give 

Notices  for  foreign  applicants  may  be  served  on  their  repre- 
sentatives in  the  United  States 

Oath,  to  be  made  before  whom 

Oppositions: 

May  be  made  by  any  person  who  believes  he  would  be 
damaged  by  registration 

May  be  filed  by  attorney 

Must  be  accompanied  by  fee 

Notice  of  grounds  of  opposition  shall  be  given  to  appli- 
cants   

Notice  of,  must  be  filed  within  30  days  after  pubhca- 
tion 

Notice  of,  must  be  verified 

Proceedings  under 

Order  for  copies,  to  specify  what 

Personal  attendance  of  applicants  unnecessary 

Petitions  to  Commissioner  of  Patents 

No  fee  required  for 

Petition  to  contain  what 

Portraits  of  living  individuals  not  registrable  without  their 

consent  in  writing 

Postage  must  be  prepaid 

Powers  of  attorney: 

Filing  of 

Requisites  of 

Revocation  of 

Printed  copies  of  trade-marks  furnished  by  the  office .  .  . 

Priority  proceedings,  patent  practice  to  govern 

Publication  in  the  Official  Gazette: 

Of  registered  trade-marks 

Of  trade-marks  before  registration 

Publications,  prices  of  copies  of 

Recording  assignments 

Fees  for 

Refunding  of  fees 

Refusal  of  an  application,  office  proceedings 

Registrants  under  act  of  1881,  rights  of 

Registration : 

Barred,  when 

Certificate  of,  date,  duration,  etc 

Of  attorneys 

Of  marks  used  10  years  prior  to  the  passage  of  the  act  of 
Feb.  20,  1905 

Of  particular  trade-marks,  office  can  not  advise  as  to.  . 

Renewal  of 

Who  is  entitled  to 

Remittances,  how  made 

Renewal  of  certificates  of  registration 

Repayment  of  money,  when  made 


Rules. 


Pages. 


19 

17 

24 

18 

22  (6) 

18 

41 

22 

34 

20 

40 

22 

54 

25 

73 

28 

73 

28 

29 

19 

34 

20 

51 

24 

51 

24 

51 

24 

54 

25 

51 

24 

51 

24 

51,  54,  55 

24 

25 

67 

27 

6 

15 

56 

25 

56 

25 

22  (a) 

18 

19 

17 

10 

16 

12 

16 

12 

16 

14 

16 

66 

27 

46 

23 

68 

27 

40 

22 

69 

28 

62,63 

27 

69 

28 

72 

28 

38,39 

21 

,22 

61 

26 

17,  19,  62 

17 

,27 

40,59 

22 

,26 

11 

16 

20 

18 

9,25 

15 

,  19 

60 

26 

16,  17,  18 

16 

,  17 

3,  70,  71 

15 

,28 

60 

26 

72 

28 

Indexes 
Index  to  trade-mark  rules — Continued 


[789]        53 


Subject. 


Representatives  in  the  United  States,  foreign  applicants 

must  designate 

Residence  of  applicants  required  (see  Statute) 

Restrictions  on  registration 

Return  of  papers  lacking  in  courtesy  and  decorum 

Return  of  application  papers  not  allowed 

Review  by  Commissioner  of  Patents  of  adverse  decision.  . . 

Scandalous  or  immoral  matter  not  registrable 

Schedule  of  fees 

Secrecy,  applications  preserved  in 

Separate  letters,  when  required 

Signatures  of  applicants  must  be  uniform 

Specimens  of  the  trade-mark  required 

Statement: 

May  be  amended 

Must  recite  what 

States,  registration  of  trade-marks  used  in  commerce  among 

Substitute  declaration,  when  required 

Substitution  of  attorneys 

Suspension  of  applications 

10  years'  use  prior  to  Feb.  20,  1905,  permits  registration  of 

certain  marks 

Term  of  registration: 

Duration  of 

Renewal  of 

Transfer  of  trade-mark  rights  (see  also  Assignments) 

Unlawful  business,  trade-marks  used  in,  not  registrable.  . . 
Use: 

Manner,  or  mode  of,  to  be  recited 

Time  of,  to  be  recited  (see  Statute) 

Verification  of  declaration 

Weekly  issue  to  close  on  Thursday 

Writing,  business  to  be  transacted  in 


Rules. 


Pages. 


28 

19 

22  (6) 

18 

17,  19 

17 

2 

15 

45 

22 

56 

25 

19 

17 

69 

28 

26 

19 

4,  42 

15,22 

24 

18 

22(e) 

18 

41 

22 

22  (6) 

18 

19 

17 

35 

21 

13 

16 

45  {b-d) 

23 

20 

18 

59,61 

26 

60,61 

26 

63 

27 

19 

17 

22  (6) 

18 

22  (6) 

18 

34 

20 

40 

22 

1 

15 

INDEX  TO  TRADE-MARK  FORMS 


Subject. 


Application  for  cancellation  of  a  trade-mark 

Declaration  for: 

Applications  under  10-year  proviso 

Associations 

Corporations 

Firms 

Foreigners 

Under  sec.  3  of  the  act  of  May  4,  1906 

Individuals 

Notice  of  opposition 

Petition 

For  renewal 

Statement  for: 

Associations 

Corporations 

Firms 

Foreigners  under  section  3  of  the  act  of  May  4,  1906 

Individuals 


Rules. 

Pages. 

13 

37 

8 

34 

7 

34 

7 

34 

5 

33 

9 

35 

11 

36 

3 

31 

12 

37 

1 

31 

14 

38 

6 

33 

6 

33 

4 

32 

10 

36 

2 

31 

INDEX 

I  Beferences  are  to  pages  ] 

ABANDONMENT 

assignment  may  work,  697. 

common-law  trade-mark  may  be  lost  by,  30. 

defense  of,  695, 

estoppel  necessary  to,  697. 

intention  to  abandon  may  be  inferred  from  circumstances,  696. 

intent  of,  from  proof  of  non-user,  697. 

silence  does  not  work,  697. 

non-user  does  not  constitute,  696. 

is  a  question  of  intent,  695. 

what  constitutes,  695  et  seq. 

what  periods  of  time  may  work,  698  et  seq. 

ABBREVIATIONS.     (See  Catchwords.) 
catchwords,  family  names  as,  146. 
of  corporate  names,  169. 
of  names  of  goods,  100. 

surnames,  as  "Huyler's,"  "Hire's,"  etc.,  146. 
use  of  "&  Co.,"  114. 

ABSTRACT  MEANING 

place  names  may  acquire,  207. 

ABSTRACT  NAMES 

differ  from  business  names,  81,  207. 

geographic  names  may  be  used  for,  223. 

of  objects,  family  names  or  surnames  may  be  used  for,  143. 

ACCOUNT  OF  SALES 

ordered  kept  by  defendant  when  injunction  not  granted,  641. 

ACCOUNTING 

directed  of  fraudulent  sale  of  goods  made  by  secret  process,  358,  359. 

effect  of  silence  or  acquiescence  on,  701. 

for  profits,  right  to,  barred  by  laches,  703,  732. 

material  delay  bars  right  to,  703. 

when  not  ordered,  720. 

ACQUIESCENCE 

common-law  trade-mark  may  be  lost  by,  30. 
distinguished  from  laches,  699. 

791 


792  Index 

( Beferences  are  to  pages  | 

ACQUIESCENCE— Continued. 

in  sense  of  inaction,  on  which  others  have  right  to  rely,  706.    (See  Laches.) 
may  grant  a  revocable  license,  does  not  preclude  one  from  asserting  his 

rights,  701.  ' 
no  presumption  of,  arises  from  exclusive  right,  703. 
test  of,  708. 

ACQUIRED  MEANING 

(See  Six'ONDAUY  Meaning.) 

ACQUISITION 

must  be  supported  by  suflScient  use,  411. 
of  trade-mark,  409,  410. 

ACTION 

based  on  injury  to  business,  328. 

basis  of.    (See  Chapter  II,) 

exclusive  riglit  not  necessary  to,  2,  26. 

features  of,  as  to  label,  260. 

on  trade-mark  and  for  unfair  competition  do  not  differ,  3. 

requisites  of  an  action  for  interference  with  contract,  345. 

requisites  of  action  for  unfair  competition,  9. 

right  of,  based  on  injury  to  a  man's  trade,  business  or  calling,  323. 

depends  upon  question  of  fact,  3. 
who  may  sue  for  misuse  of  geographic  name,  200. 

ADDRESSES 

of  companies  that  have  been  consolidated,  178. 
street  addresses,  112. 

ADJOINING 

stores,  fraud  resulting  from,  686.    (See  Location.) 

ADMINISTRATOR 

of  deceased  partner  may  be  party  plaintiff,  638. 

ADOPTION 

of  trade-mark,  411. 

ADULTERATION 

of  goods,  222. 

ADVERTISING 

appropriation  of,  by  competitor,  556. 

by  person  using  nickname  of  competitor  actionable,  100 

development  of,  effect  of,  116. 

effect  of,  628. 


Index  793 

I  References  are  to  pages  ] 

ADVERTISING— Continued, 
inserts,  unfair  use  of,  558. 

on  value,  25. 
matter,  misrepresentation  in,  689. 
purposes,  use  of  prices  for,  565. 
right  of  sons  to  advertise  their  connection  in  business  with  father  who  has 

sold  his  business  and  is  dead,  155. 
right  to  advertise  facts  as  to  skill,  experience,  former  residence,  etc.,  on 

selling  out  one's  business,  56. 
the  succeeding  to  another's  business,  112. 

use  of  blind,  557. 
use  of  false,  556. 

ADVERTISEMENTS 

by  one  who  has  sold  his  business,  56. 

false,  of  possession  of  good-will,  37 

libelous,  injunctions  against,  473. 

printing  advertisements  out  of  alphabetical  order,  487. 

ADVERTISING  MATTER 

copying,  248. 
misrepresentations  in,  688. 

AFFIRMATIVE 

duty  to  differentiate,  171.    (See  Differentiate.) 

AGENTS 

bribery  of  competitors',  560. 

defense  that  defendant  acted  as  agent,  not  as  principal,  667. 

effect  of  specific  orders  given  to  agent  to  act  fairly,  624. 

fraudulent  acts  of,  principal  not  excused  by  his  orders  against  such  acts,  624. 

may  be  made  defendants  although  proprietor  or  principal  is  not,  638. 

of  corporation  not  proper  parties  defendant,  639. 

AGENT 

of  steamship  line  may  acquire  secondary  meaning  in  name  as  against  owner 

of  line,  231. 
of  unknown  principal  may  be  sued,  639. 
use  of  material  obtained  for  a  principal  may  not  be  used  in  competition 

against  him  by  agent,  312. 

ALIENS.    (See  Foreigners.) 

application  by,  for  trade-mark,  431. 
rights  of,  as  to  trade-marks,  410. 

ALLEGATIONS.     (See  Pleading.) 
by  way  of  recital,  571. 
essential,  575. 


794  Index 

I  References  are  to  pages  ] 

ALLEGATIONS— Continued. 

facts,  not  conclusions,  to  be  alleged,  571. 
on  information  and  belief,  571. 
what  held  insufficient,  576. 
what  held  sufficient,  575. 

ALPHABET 

(See  Letters  of  Alphabet.) 

APPEALS 

to  the  Commissioner  of  Patents,  453. 
to  the  U.  S.  Supreme  Court,  461. 

APPEARANCE 

general,  of  an  article  with  its  dress  or  get-up,  important,  241. 

APPLICANT 

registration  of  name  of,  433,  438. 

APPLICATION 

for  registration,  428. 
pending,  465. 

APPROPRLATION 

of  advertising  by  a  competitor,  556. 

ARBITRARY  SENSE 

common  words  used  in,  397. 

ARCHITECTURE 

form  or  style  of  buildings,  fraud  in  use  of,  259. 

ARTICLES 

manufactured  by  others,  making  repair  parts  for,  285. 

ARTIFICLAL 

or  made-up  names,  91  et  seq. 

ARTISTS 

names  of,  used  in  business  not  transferable,  37. 

ASSIGNMENTS 

(See  Transfer.) 
assignee  may  not  sell  assignor's  labels  in  bulk,  50. 
for  benefit  of  creditors,  transfers  of  names,  marks,  etc.,  in,  48. 
names  not  assignable  in  gross,  44. 

of  mark  or  name,  must  be  incidental  to  transfer  of  business,  46. 
of  secret  carries  right  to  protect  it,  316. 


Index  795 

( References  are  to  pages  | 

ASSIGNMENTS— Continued, 
of  trade-mark,  454. 

of  trade-marks  without  transfer  of  business  may  be  valid,  43. 
trade  names  and  marks  not  assignable  in  gross,  44. 

ASSOCIATION 

between  a  business  and  a  geographic  name,  203  et  seq. 

between  name  and  user,  120. 

use  of  word  by  concern  not  incorporated,  181. 

ASSUMED  NAME 
registration  of,  33. 

ATTORNEY 

sale  of  practice,  54. 

AUCTION 

purchase  of  good-will  at,  61. 

AWNING 

misuse  of,  188. 

AUTHORS 

of  different  dramatizations  of  same  novel,  533. 
name,  use  of,  543. 
rights  in  hie  work,  510. 

AUTOGRAPH  SIGNATURE 

use  of,  246. 

without  consent  of  owner,  247. 

BAGS 

copying  of,  250. 

for  tobacco,  similarity  in,  272. 

use  of  marked,  already  once  used,  255. 

"  BAKER  " 

chocolate  cases,  127  et  seq.,  136, 160. 

BAND 

paper,  around  loaf  of  bread,  282. 

BANKRUPT 

may  not  resume  use  of  his  name  sold  in  bankruptcy  as  trade  name,  48. 

BANKRUPTCY 

transfer  of  names,  marks,  good-will,  etc.,  in,  48. 


796  Index 

I  References  are  to  pages ' 

BASIS  OF  ACTION 

for  unfair  competition.    (See  Action.) 

BILL  OF  COMPLAINT.    (See  Pleading.) 
in  the  nature  of  quia  timet,  639. 
must  set  out  facts  upon  which  action  based,  571. 

BOND 

(See  Injunction.) 
given  pending  trial,  643. 

BOOKS,  ETC. 

imitation  of  covers  of,  251. 

title  of,  may  acquire  secondary  meaning,  516. 

names  of,  517. 

reprints  of,  fraud  in,  527. 

short  names  for,  526,  note  37. 

title  or  name  of,  will  be  protected  from  imitation,  518. 

uncopyrighted,  may  be  reproduced,  523. 

BOTTLES 

(See  List  of  Subjects,  p.  233.) 
copying  form  of,  251. 
copying  shape  of,  etc.,  251. 
false  labels  on,  253,  254. 
misuse  of,  in  selling  liquor,  255. 
refilling  those  already  used,  253,  255. 
refilling,  with  inferior  goods,  257. 
shape  of,  238,  252,  253. 
use  of  falsely  marked,  255. 
use  of  stock  bottles,  244. 

BOTTLING 

goods  bought  in  bulk,  fraud  in,  254. 

BOX 

copying  form  of,  250. 
shape  of,  239. 

BOXING 

goods  fraudulently,  265. 

BOYCOTT 

by  use  of  letters,  circulars,  etc.,  486. 

BRANDS 

(See  Labels.) 


Index  797 

[  References  are  to  pages  | 

BREACH 

procuring,  of  provisions  of  lease,  348. 

BREACH  OF  CONTRACT 

by  disclosure  of  trade  secret,  297. 

by  which  trade  secret  betrayed,  296. 

caused  by  one  not  party  to  it,  337. 

duration  of  contract  does  not  affect  breach,  348. 

equity  protects  against  unfairly  procuring.     (See  Interference  with 

Contract.) 
inducing,  344  et  seq. 

inducing,  by  offers  to  save  harmless,  568. 
inducing  breach  of  contract  for  sale  of  goods  made  under  secret  process, 

357. 

BREWERY 

right  to  name,  on  sale  of,  42. 

BRIBERY 

as  a  means  of  competition,  560. 
of  competitor's  employees,  560. 

BUILDINGS 

decorated  in  an  individual  way  are  sometimes  signs,  110. 

fraud  in  location  of,  259,  651. 

fraudulent  get-up  or  decoration  of,  etc.,  257. 

good-will  of,  32. 

names  of,  82. 

sale  of,  42. 

BULK 

sale  of  goods  in,  for  bottling,  fraud  in,  254. 

of  labels  of  assignor  by  assignee  in  bulk  unfair,  49. 

"  BURGESS  V.  BURGESS  " 

effect  of  decision  in,  121. 

BUSINESS 

absolute  right  to  enter  any,  not  barred  by  fact  one's  name  already  in  use 

by  another,  124. 
character  or  kind  of,  as  regards  competition,  105. 
credit,  libel  and  slander  of,  470. 

duty  to  prevent  confusion  resting  on  one  who  sells,  46. 
effect  of  locality  on  transfers  of,  57. 
effect  of  moving,  216. 

injuring  a  rival  by  pretended  competition,  .560. 
injury  to  another's,  actionable,  333. 


798  Index 

I  Beferences  are  to  pages  1 

BUSINESS— Continued, 
interference  with,  333. 
sale  of  a,  rights  of  vendor,  38. 

sale  of  name  or  business  by  originator  of  an  article,  56. 
site,  sale  of,  effect  on  names,  42. 

BUSINESS  NAMES 

considered  as  transitory  or  personal,  local  or  fixed,  82. 

differences  between  them  and  abstract  names  of  objects,  81,  207. 

distinguished  from  marks,  designs,  devices,  etc.,  80. 

effect  of  removal  of  business  on,  216. 

general  principles,  79. 

libel  and  slander  of,  470. 

names  of  books,  etc.,  517. 

newspapers,  magazines,  etc.,  535. 

plays,  528. 
secondary  meaning  of  semi-geographic  business  names,  230. 
street  addresses  used  as,  112. 

used  with  phrases  such  as  "Formerly  with,"  "Late  of,"  etc.,  86. 
useof  suffix  "&  Co.,"  114. 

BUYING 

carelessly,  not  a  test  of  similarity,  586,  contra,  123. 
where  employer  buys  material,  not  a  trade  secret,  311. 
what  is  fair  caution  in,  264,  265. 
who  is  an  ordinary  buyer,  585  et  seq. 

CALCULATED 

to  deceive.    (See  Similarity.) 

CAMEL'S  HAIR 
belting  cases,  70. 

CAPS 

misuse  in  get-up  of,  258. 

CANCELLATION 

of  registration,  456. 

of  registration  may  be  ordered  by  equity  court,  464. 

CARELESS  BUYERS 

(See  Purchasers.) 

CARTONS,  WRAPPERS,  ETC. 

unfair  use  of,  250. 


Index  799 

I  References  are  to  pages  ] 

CATCHWORDS 

(See  Abbreviations.) 
family  names  as,  159. 
principal  word  of  name,  590. 
use  of  part  of  corporate  name  as,  170, 183. 

CAUSES  OF  ACTION 
joinder  of,  570. 

CAUTIONARY 

notice,  use  of,  704. 

CELEBRITY 

of  trade-mark  measure  of  its  value,  74. 

CERTIFICATES 

of  registration,  455. 

CERTIORARI 

writs  of  in  trade-mark  cases,  461. 

CHANCERY 

court,  effect  of  act  of  1854  on,  474. 

courts,  power  of,  to  enjoin  libels  prior  to  English  Procedure  Acts,  472. 

power  of,  to  protect  property  rights,  295. 

CHARACTER 

of  business  of  competitors,  when  same  and  when  not,  105. 

CHARITABLE  CORPORATIONS 

names  of,  166,  169.    (See  Corporations.) 

CHEAP  GRADE 

fact  that  defendant  makes  cheaper  goods  than  plaintiff  no  defense,  662. 

CHEAPNESS 

not  an  offense,  662. 

CHILDREN.     (See  Descendants.) 
rights  of,  to  family  name,  64. 
right  of,  to  name  of  father,  153. 
(See  Family  Name.) 

CIGAR 

bands,  249. 


800  Index 

(  References  are  to  pages  ] 

CIRCULARS 

announcing;  business  change,  unfair  use  of,  57. 

copying  reading  matter  on,  248. 

form  of  one,  held  to  be  proper,  482,  494. 

giving  notice  of  pendency  of  suit  for  unfair  competition  are  legal,  496. 

issued  to  intimidate  customers,  not  fairly  warn  tlicm,  493. 

issuing,  interference  with  contract  by,  369. 

must  bad  faith  be  shown  to  warrant  injunction  against,  493. 

notices,  57. 

placards,  505. 

reading  matter  on,  247. 

restraining  issuance  of,  488. 

use  of  cautionary,  488. 

CITIES.     (See  Residence.) 
names  of,  right  to  use,  213. 

CITIZENSHIP 

of  parties,  efifect  on  jurisdiction  in  unfair  competition  cases,  636. 

CLASSIFICATION 

instances  of,  436,  437. 

of  goods  under  Trade-Mark  Act,  etc.,  420,  436. 

(See  Appendix  for  List  of  Classes  Classified  by  Patent  Office.) 
instances  of  classifications,  436,  437. 
same  descriptive  properties,  definitions  of,  452. 

CLEAN  HANDS 

defense  of,  must  be  based  on  conditions  at  time  of  suit,  670. 

defense  of,  when  not  sufficient,  320. 

plaintiff  must  come  into  court  with,  671,  675,  691. 

CLERKS 

(See  Employees.) 

CLUBS 

unincorporated,  names  of,  186. 

COLLOCATION 

of  features,  copying,  239. 

protected  by  injunction,  240. 

COINCIDENCES  IN  MEANING  OF  NAMES 

fraud  in  use  of,  101. 

COLOR 

alone  not  a  trade-mark,  594. 

bronzing  nail  heads,  as  mark  of  identity,  279. 


Index  801 

I  References  are  to  pages  ] 

COLOR— Continued. 

cannot  be  monopolized,  594. 

combination  of,  with  other  features,  producing  likeness  enjoined,  239, 595. 

copying  a,  unfairly,  292. 

different  colored  rope  strands,  right  to  use,  292. 

form  of  decree  against  use  of,  652. 

injunctions  against  use  of,  652. 

may  be  appropriated  by  one  person  in  combination  with  other  features  of  an 

article,  238  et  seq. 
may  be  used  to  make  an  otherwise  proper  use,  fraudulent,  238. 
mere  diversity  of,  in  get-up  of  goods  not  controlling  as  to  fraud,  236. 
simulation  of,  594. 
trade-mark  in,  234. 

COLORABLE  IMITATION 

(See  Similarity.) 

COLOR  SCHEME 

imitation  of,  239. 

COMBINATION 

of  color,  form,  size,  etc.,  protected  against  unfair  competition  (with  cases 

cited),  239,  258,  270,  282.    See  also  cases  cited  at  p.  273. 
of  companies,  effect  on  corporate  name,  178. 
of  names  to  produce  fraud,  94. 

COMIC  STRIPS 

titles  of,  541. 

COMITY 

relative  rights  of  foreign  and  domestic  corporations  as  to  name,  165. 

COMMERCE 

important  part  played  by  good-will  in,  31. 

COMMON  LAW 

gives  right  of  action  on  injury  to  a  man's  trade,  business  or  calling,  323. 
may  be  lost  by  laches,  non-user,  etc.,  30. 
Procedure  Act  of  1854,  471. 
trade-mark,  acquisition  of,  409. 

definition  of,  374. 

extent  of  territory  in  which  it  exists,  29. 

COMMON  LAW  TRADE-MARK 

definition,  27,  374. 

COMMON  TO  THE  TRADE 

features  common  to  a  trade,  not  protected,  242,  243,  244,  284. 


802  Index 

I  References  are  to  pages  | 

COMMON  USE 

defense  that  article  is  in,  659. 

resemblance  of  features  in,  244. 

that  a  form  is  used  commonly  in  a  trade,  242. 

COMMON  WORDS 

used  in  an  arbitrary  sense,  397. 

COMPANY 

use  of  word  by  concern  not  incorporated,  181. 

COMPARISON 

of  articles.     (See  Similarity.) 

of  names  or  marks  as  evidence,  581. 

unfair  comparison  of  prices,  568. 

COMPETITION 

bribery  as  a  means  of,  560. 

by  unfair  comparison  of  prices,  567. 

combining  to  procure  discharge  of  fellow  workmen  is  not,  347. 

definition,  12. 

distance  between  stands  of  competitors,  592.    (See  Locality  and  Dis- 
tance.) 

injuring  a  rival  by  pretended  business,  560. 

interference  with  trade  by  simulated,  369. 

limitation  of  freedom  of,  322. 

necessity  of,  168,  658. 

of  "vendor  "  of  business  with  vendee  after  sale,  38,  40,  49. 

unfair  use  of  price  as  means  of,  567. 
(See  Unfair  Competition.) 

COMPETITORS 

appropriation  of  advertising  by,  556. 
bribery  of  employees  of,  560. 
customers,  intimidation  of,  493. 

interference  with,  368. 

threats  made  to,  368. 
defamation  of,  550. 

distance  between,  effect  on  question  of  similarity,  592. 
employment  of  employee  of,  313. 
enticing  away  employees  of,  330. 
false  statements  as  to,  486. 
goods  of,  defamation  of,  478,  550. 
ideas  and  methods  of,  unfair  appropriation  of,  552. 
inducing  breach  of  contracts  of,  568. 
interference  with  contracts  of,  344. 

salesmen  of,  368. 


Index  803 

[  References  are  to  pages  | 

COMPETITORS— Continued. 

misuse  of  signs  of,  560. 

obstruction  of  customers  of,  550. 

unfair  acts  of,  may  be  basis  of  court  action,  35. 

use  of  prices  to  inflict  injury  on,  564. 

CONCEALING  MARKINGS 

on  packages,  etc.,  248. 

CONCEALMENT 

of  part  of  label  or  name,  effect  of,  248. 

CONCURRENCE  deloyah. 

French  term  for  unfair  competition,  definition  of,  16. 

CONDITIONAL 

contracts  between  manufacturer  and  retailer,  inducing  breach  of,  355. 
sale  of  goods  made  by  secret  formula,  299. 

CONFIDENTIAL 

information.    (See  Secrets.) 

relation  of  employer  and  employee,  what  is,  309, 311. 

relations,  law  of,  294. 

CONFUSION 

caused  by  misuse  of  signs,  110. 

duty  to  prevent,  resting  on  one  who  sells  his  business,  46. 

explanatory  phrases  as  means  of  eliminating,  in  family  names,  124. 

CONSENT 

(See  Acquiescence.) 
consequences  of  one's  act  presumed  to  be  intended,  622. 
inferred  from  acquiescence  may  be  withdrawn,  701. 
not  to  be  presumed  from  silence  of  owner  of  mark  or  name  used  without 

right  by  another,  697,  701. 

CONSOLIDATION 

of  company  or  corporations,  effect  on  name,  178. 

CONSTRUCTION 

copying  features,  essential  to,  276. 
names  descriptive  of,  88. 

CONSUMERS 

(See  Purchasing  Public,  Customers.) 
export  of  goods  for  foreign  consumption,  effect  of  that  fact  on  names  of 
goods,  108. 


804  Index 

I  Beferences  are  to  pages  ) 

CONTAINERS 

refilling  those  already  used  once,  253,  256. 
use  of  second-hand  or  used,  255. 
use  of  stock,  239. 

CONTRACT.     (See  Breach  of  Contract.) 

a  binding  moral  obligation,  344. 

as  to  trade  secret  and  contract  on  other  personal  property,  distinction  be- 
tween, 298. 

between  manufacturer  and  retailer,  procuring  breach  of,  355. 

breach  of,  is  there  moral  justification  for?  344. 

forbidding  employee  to  disclose  trade  secrets,  308. 

for  furnishing  information,  interference  with,  342. 

for  sale  of  goods  made  under  secret  process,  inducing  breach  of,  357. 

ignorance  of  existence  of,  no  defense,  351. 

inducing  breach  of  the  contracts  of  competitors,  344  et  seq.,  359. 

interference  with,  by  third  person,  336. 
by  disclosure  of  secrets,  297. 

interference  with  fixed  contract  and  with  uncompleted  contract,  distinc- 
tion between,  362. 

interference  with  contracts  regarding  trading-stamps,  361. 

interference  with  proposed  or  prospective,  361. 

justification  of  interference  with,  350. 

of  employment,  violation  of,  by  betrayal  of  trade  secret,  303. 

of  passengers  with  transportation  company,  343. 

partly  concluded  by  salesman  prior  to  his  discharge,  belongs  to  employer, 
314. 

procuring  breach  of  contract  not  to  re-enter  business,  351. 

to  sell  only  to  specified  persons,  interference  with,  357,  358. 

what  constitutes  interference  with,  344. 

with  employee,  interference  with,  339. 
servants,  "  "    338. 

employee  implies  agreement  not  to  disclose  trade  secrets,  306. 

CONTRIBUTORY 

acts,  to  unfair  acts,  548. 

COPY 

right  to  copy  exactly  goods  of  others,  286. 

COPYING  OR  SIMULATING 

(See  List,  p.  275.) 
a  collocation  of  features,  239. 
a  name  exactly,  92. 

articles  on  which  patents  have  expired,  288. 
a  single  feature  or  part,  284. 


Index  805 

( References  are  to  pages  | 

COPYING  OR  SIMULATING— Continued, 
bottles  of  a  competitor,  251. 
color,  292. 

distinguishing  features  of  article  as  a  whole,  277. 
duty  to  differentiate  one's  goods  from  those  already  in  market,  282. 
entire  article  of  rival  and  placing  one's  own  name  on  copy,  effect  of,  283, 
features  necessary  to  construction  of  an  article,  276. 
general  get-up,  264. 
identical  name  of  competitor,  92. 
labels  in  which  name  is  principal  feature,  261. 
making  a  facsimile,  278. 
patented  articles,  288. 
repair  parts,  285. 
salient  features,  263,  590. 
single  feature  of  dress,  color,  etc.,  238. 
whole  article,  278. 

COPYRIGHT 

analogy  between  action  for  unfair  competition  and  infringement  of,  513. 

enactment  of  statutes,  re,  509. 

jurisdiction  of  federal  and  state  courts,  545. 

of  labels,  effect  of  not  procuring,  260. 

publication  of  literary  work  condition  precedent  to  obtaining,  510. 

rights  on  expiration  of,  524. 

right  to  enjoin  after  expiration  of,  526,  note  38. 

COPYRIGHTED 

misrepresentation  in  use  of  the  word,  687,  690. 

CORPORATE  NAME 

abbreviation  of,  169. 

adoption  by  corporation  of  name  used  by  individual  or  partnership,  172. 

affirmative  duty  on  incorporators  to  differentiate  name  from  existing  names, 

171. 
by  incorporating,  a  business  gains  no  better  rights  as  to  the  name  which  its 

incorporators  had  been  using  as  a  partnership  or  otherwise,  163. 
charitable  corporations,  names  of,  166,  169. 

ground  of  protection  of  name  of,  against  unfair  use,  164  note, 
choosing,  162. 

nickname  of  rival,  169. 
claiming  falsely  to  be  a  corporation,  694. 
comity  as  to  rights  to  use  a  name,  165. 
consoUdation  of  corporations,  effect  of  on  names,  178. 
corporation  not  necessary  party  defendant  in  action  against  individuals 

doing  business  under,  638. 
difference  between,  and  other  names,  161. 


800  Index 

( References  are  to  pages  I 

CORPORATE  NAME— Continued, 
dissolution,  right  to  name  on,  58. 
domestic  corporation,  rights  of,  as  to  name  against  foreign  corporation,  165, 

171. 
duty  of  incorporations  as  to  choice  of  name,  162. 

to  differentiate  corporate  names,  171. 

of  corporations  to  avoid  confusion  in  choosing,  152, 162. 
executive  oflBcers  may  be  made  parties  defendant,  638. 
false  or  misleading  use  of,  185. 

family  name,  effect  of  use  of,  in  corporate  name,  172, 173. 
foreign  corporation  must  yield  to  domestic  corporations  as  to   name, 

165. 
intention  in  selecting,  controls,  175,  note  29. 
names  of  incorporated  fraternal  societies,  187. 
names  of  unincorporated  societies,  etc.,  185. 
not  trade-mark,  169. 

persons  controlling  corporation,  as  defendants  jointly  with  corporation  it- 
self, 638. 
priority  in  organization,  effect  on  name,  165,  note  8. 

in  time  of  use  of,  180. 
protected  by  unfair  competition,  170. 

purchase  of  right  to  use  a  name  similar  to  one  already  in  use,  175.  ' 
registration  of,  under  State  laws,  163. 
right  of  incorporator  to  use  his  own  name  in,  173. 

to  use  family  name  not  given  by  merely  getting  permission  of  person 
bearing  name,  175. 
rights  of  foreign  corporation  as  to  name  borne  by  domestic  company, 

within  limits  of  the  home  State,  165,  note  8. 
right  to  use  name  of  a  stockholder,  extent  of,  177. 
rights  of  retiring  stockholders  and  others  in,  50. 

of  domestic  and  foreign  corporations  as  to,  165. 
should  be  differentiated  from  partnership  names  as  well  as  corporate  names, 

171. 
similarity  of,  to  partnership  names,  and  differences,  161. 

of,  what  is,  187. 
stockholders  not  proper  parties  defendant  in  action  against,  639. 
State  charters,  effect  on,  163. 
used  as  trade  catchwords  or  nicknames,  170, 183. 
use  of  "Works,"  "Company,"  etc.,  by  unincorporated  concerns,  181. 

of  part  of  corporate  name  as  catchword  or  nickname,  170. 

of  name  of  one  of  incorporators  as  part  of,  may  be  fraudulent,  179. 

of  name  of  deceased  person,  186. 
what  is  evidence  of  fraud  in  use  of,  177. 

CORPORATE  STOCK 

acquiring,  for  purpo.se  of  unfair  competition,  568. 
effect  of  state  charter  on  name  of,  163. 


Index  807 

I  References  are  to  pages  1 

CORPORATION 

executive  officers  may  be  made  parties  defendants,  638. 
falsely  claiming  to  be,  694. 
family  names  as  names  of,  172. 
foreign  and  domestic,  rights  of,  as  to  name,  165. 
injunction  against  use  of  name  of  former  member  of,  655. 
names  of  charitable,  166. 

not  necessary  party  defendant  in  action  against  individuals  doing  business 
under  corporate  name,  638. 

CORRESPONDENTS 

list  of,  belonging  to  a  business  house,  part  of  good-will,  35. 

COST 

as  element  of  damage,  717. 

of  manufacture  deducted  from  profits,  719. 

COURT 

disclosure  of  secret  in,  effect  of,  301. 

does  not  pass  on  defendant's  plans  to  correct  his  unfair  acts,  649. 

failure  of,  to  work  out  remedial  doctrine,  120. 

jurisdiction  of,  460. 

jurisdiction  of,  in  unfair  competition  cases,  636. 

may  destroy  infringing  marks,  462. 

scope  of  power  of,  462. 

CREDITORS  ' 

assignments  for,  and  transfers  in  bankruptcy,  48.  " 

CUSTOMERS 

classes  of  purchasers  that  the  law  protects,  586. 

differences  in  character  of,  to  be  considered,  585  et  seq. 

have  buyers  a  right  to  be  careless,  123,  264. 

inducing  them  to  cease  trading  with  another  dealer  enjoined,  337. 

interference  with  contract  of  rivals  by  false  representations  to,  368. 

intimidation  of,  493. 

list  of,  fraudulently  obtained,  may  be  ordered  to  be  destroyed,  317, 318. 

is  a  trade  secret,  316. 

is  part  of  good- will,  34. 
obstruction  of  a  competitor,  550. 
right  of  vendor  to  sohcit,  after  a  sale  of  business,  38,  55. 
right  to  enjoin  issuance  of  circulars  threatening  prosecution,  488. 
solicitation  of,  558. 

by  former  partner,  51,  53. 

by  retiring  stockholder  or  partner,  51. 


808  Index 

I  Beferences  are  to  pages  1 

CUT  PRICES 

where  use  of,  accompanies  unfair  or  inaccurate  description  of  goods,  567. 

DAMAGES.     (See  Profits.) 

American  methods  of  assessing  damages  in  equity,  712  et  seq. 

as  distinguished  from  profits,  712. 

compensation  to  plaintiff  is  purpose  of  granting,  713. 

elements  of,  716. 

exemplary,  372. 

for  interference  with  business,  368. 

for  Ubel,  478. 

good  faith  as  an  excuse  for  relieving  defendant  from  paying  damages,  735. 

in  estimating,  profits  taken  into  account,  372. 

injury  to  reputation  of  an  article  to  be  considered,  717. 

in  suits  at  law  for  unfair  competition,  734. 

in  unfair  competition  cases,  711. 

measure  of  elements  of,  716. 

plaintiff's  losses  to  be  computed  in  reckoning  profits,  719. 

profits,  cost  of  manufacture  deducted  from,  719. 

deduction  of  expenses  of  salesmen,  718. 
when  interest  on  computed,  721. 

DEALERS'  TALK 

misrepresentation  in,  691. 

DEATH 

of  owner  of  secret,  effect  of,  303. 

of  person  whose  name  is  part  of  trade  name,  effect  of,  47. ' 

of  partner,  effect  on  name,  60. 

effect  on  use  of  his  name  and  portrait,  47. 

DECEIT 

actual,  need  not  be  shown  to  warrant  injunction  issuing,  639.  ' 

proof  of,  unnecessary,  but  valuable,  601,  628. 
degree  of  similaritj''  calculated  to  cause,  235. 
of  ultimate  purchaser,  not  jobber,  is  important  question,  593. 
shown  by  fact  that  goods  are  likely  to  deceive,  620. 

DECEPTION 

may  arise  from  manner  of  printing  words  on  labels,  237. 
probability  of,  040. 

DECEPTIVE  WORDS 

not  registrable,  433-438. 

DECOY 

use  of  prices  as,  565. 


Index  809 

( Beferences  are  to  pages  / 

DECREE 

correcting  confusing  use  of  names,  651. 
final,  as  to  corporate  name,  655. 

as  to  use  of  partnership  names,  655. 

form  of,  649. 

should  not  specify  acts  which  defendant  proposes  to  adopt  to  correct 
his  unfair  acts,  649. 
form  of,  against  unfair  use  of  a  color,  652. 

correcting  unfair  use  of  form,  size,  shape,  etc.,  652. 

DEDICATION 

of  mark  to  public,  290. 

DEFAMATION 

(See  Disparagement.) 
of  competitors,  550. 
of  goods  of  competitors,'  478,  550. 

DEFENDANTS.     (See  Parties.) 

all  acts  of,  should  be  considered  together  and  not  taken  singly,  651. 
cannot  be  deprived  of  right  to  use  own  name,  119. 
effect  of  warning  to,  613. 

DEFENSES 

abandonment,  695. 

acquiescence  in  the  sense  of  inaction  upon  which  others  have  a  right  to 

rely,  706. 
claiming  falsely  to  be  a  corporation,  694. 
continuing  use  of  name  of  predecessor,  685. 
extravagant  claims  as  to  efficacy  of  medicine,  680. 
first  user  of  mark  may  revoke  license  implied  from  laches,  701.  ' 
ignorance  of  contract,  351. 

of  plaintiff's  rights,  611. 
kind  of  laches,  699. 
laches  in  the  sense  of  mere  delay,  699,  700. 

may  bar  right  to  order  for  destruction  of  offending  goods,  704. 

which  bars  right  to  preUminary  injunction,  705. 
material  delay  bars  right  to  an  accounting  of  profits,  703. 
miscellaneous  cases  of  misrepresentation  deemed  harmless,  694. 
misrepresentation  as  to  unessential  details,  686. 

as  to  manufacture,  place  of  manufacture,  or  origin  of  goods,  681. 

as  to  ingredients  and  the  nature  and  effect  of  a  medical  preparation,  674. 

as  to  maker  of  goods,  684. 

by  laudatory  expressions  and  exaggerated  trade  phrases,  691. 

by  use  of  terms  "Copyrighted"  or  "Registered,"  690. 

discontinued  before  suit  brought,  673. 


810  Ind^x 

( Beferences  are  to  pages  I 

DEFENSES— Continued. 

implying  a  claim  of  monopoly,  —  use  of  term  "Patented,"  687. 
must  be  as  to  ingredients  that  are  material,  680. 
misrepresentation  must  be  as  to  the  subject-matter  of  the  suit,  670. 
must  be  intentional  and  material,  674. 
usually  but  not  always  an  affirmative  defense,  672. 
no  presumption  of  acquiescence  arises  from  an  exclusive  right,  703. 
of  "unclean  hands,"  577. 

proof  of  specific  orders  to  agents  to  act  fairly,  624. 
question  of  intent,  609. 
test  by  which  to  determine  acquiescence,  708. 
that  act  of  defendant  too  remote,  336. 
that  complainant's  title  was  not  properly  established,  668. 
that  deception  is  due,  not  to  defendant,  but  to  a  jobber  or  retailer  or  other 

purchaser  from  defendant,  664. 
that  defendant  has  no  intent  to  pass  off  his  goods  as  plaintiff's,  611, 

622,  662. 
that  defendant  was  only  the  maker  of  the  label  or  container  complained  of 

and  was  not  responsible  for  its  ultimate  use  by  him  for  whom  it  was 

made,  667. 
that  defendant  was  acting  only  as  agent  for  another  and  received  none  of 

the  profits,  667. 
that  defendant's  article  is  as  good  as  plaintiff's,  661. 
that  defendant's  marks  differ  sufficiently  from  complainant's  to  be  capable 

of  registration  as  distinct  marks,  663. 
that  defendant's  name  is  two  or  more  words  while  plaintiff's  is  one,  and 

hence  different,  669. 
that  goods  were  not  marked  with  any  spurious  marks  or  names,  662. 
that  name,  mark,  form,  shape,  or  other  device  in  question  has  not  been 

exclusively  used  by  complainant  but  is  in  common  use,  659. 
that  no  attempt  was  made  to  imitate,  616. 
that  the  offense  is  too  trivial  for  the  court  to  notice,  668. 
that  plaintiff  and  defendant  are  not   in   competition  with  each  other, 

658. 
that  plaintiff  has  acted  unfairly  toward  third  persons  not  connected  with 

the  suit  at  bar,  669. 
that  plaintiff  has  not  extended  his  trade  to  defendant's  territory,  73. 
that  plaintiff  is  an  impostor  and  deluding  the  public,  669. 
that  plaintiff  is  in  possession  of  and  using  trade  secret,  320. 
that  plaintiff  is  making  misrepresentations  in  his  own  business,  671. 
that  plaintiff  violated  some  federal  statute  regarding  restraint  of  trade,  or 

monopoly,  710. 
that  plaintiff's  goods  are  worthless  or  useless,  669. 
that  plaintiff's  sales  have  been  small,  206. 
that  representations  objected  to  by  plaintiff  are  true,  663. 
use  of  term  "Established  in,"  695. 


Index  811 

( References  are  to  pages  | 

DEFINITE  PROPERTY  RIGHTS 

may  arise  in  name  or  mark,  26. 

DEFINITIONS 

acquiescence,  699. 

common-law  trade-mark,  374. 

competition,  12. 

concurrence  deloyale,  16. 

good-will,  32-34. 

intent  to  defraud,  608. 

laches,  699. 

malice,  330. 

mark,  373. 

names  idem  sonans,  95. 

passing-off,  2. 

secret,  294. 

similarity,  582,  583,  595. 

technical  trade-marks,  374. 

terms  used  in  Trade-Mark  Act,  468. 

trade-mark,  374, 375. 

trade  name,  374. 

unfair  competition,  12,  31,  174. 

DELAY 

(See  Laches.) 
in  bringing  suit,  when  warrants  presumption  of  intent  to  abandon,  698. 
instances  of,  which  were  held  to  bar  right  to  preliminary  injunction,  705. 
in  suing,  when  considered  as  laches,  700. 
material,  bars  right  to  an  accounting,  703. 

DELIVERY  ROUTE 

a  trade  secret,  295. 

DENIAL 

of  intent  to  defraud  will  not  avail  defendant,  622. 

DEMURRER 

what  questions  may  be  raised  by,  576. 

DESCENT 

surnames,  acquired  other  than  by,  149. 
transfer  by,  62. 

DESCENDANTS 

right  of,  to  use  ancestor's  name  as  trade  name,  64,  153,  177. 


812  Index 

I  References  are  to  pages  I 

DESCRIPTIVE  NAMES 

describing  construction,  88. 
test  as  to  what  are,  395. 

DESCRIPTIVE  PROPERTIES 

(See  Classification.) 

DESCRIPTIVE  WORDS 

foreign,  scientific,  or  unfamiliar  words  not,  90. 
not  approbriable  as  trade-marks,  392. 

DESIGNS 

character  of  property  acquired  in,  23. 
distinguished  from  business  names,  80. 

(See  chapter  on  Dress,  233.) 
ignorantly  using  one  already  in  use,  245. 
use  of,  245. 

DESTRUCTION 

of  goods,  laches  may  bar  right  to  demand,  704. 
of  offending  articles,  when  ordered,  462. 

DETAILS 

examination  of,  is  not  a  test  of  similarity,  582. 
external,  imitation  of,  107,  591. 
unessential,  misrepresentation  as  to,  629,  686. 

DETECTIVES 

evidence  of,  580,  600,  603. 

DEVICES 

defense  that  it  is  commonly  used,  659. 
distinguished  from  business  names,  80. 

(See  chapter  on  Dress,  233.) 
unfair  use  of,  88,  230,  note,  67,  263,  271. 
use  of,  245. 

DIFFERENTIATE 

duty  of  incorporators  to  differentiate  names  of  corporations,  171. 

duty  to,  as  to  name,  290. 

duty  to  differentiate  one's  goods  from  those  already  in  the  market,  200, 282. 

DIRECTIONS 

for  use,  copying,  247,  248. 

DIRECTORS 

as  parties  defendant,  637. 


Index  813 

I  References  are  to  pages  ] 

DIRECTORY 

omission  of  plaintiff's  name  from,  487. 

printing  advertisements  out  of  alphabetical  order  in  telephone,  487. 

DISCLOSURE 

of  secret  in  court,  effect  of,  301. 
(See  Secrets,  Publication.) 
of  trade  secret,  297,  314. 
by  employee,  306. 

DISCONTINUANCE 

of  infringement  before  suit  brought,  may  not  prevent  issuance  of  injunction, 

641. 
of  use  not  abandonment,  697,  698. 

DISCOVERY 

and  examination  before  trial,  605. 
of  secret,  by  lawful  means,  302. 

DISPARAGEMENT 

not  of  goods  of  a  specific  competitor,  but  of  article  sold  by  a  number  of 

competitors,  550. 
of  rivals  and  their  goods,  470,  550. 

DISSOLUTION 

by  death  of  partner,  60. 

(See  Corporate  Names,  Partner,  Partnership.) 
of  corporation,  right  to  corporate  name  on,  58,  166. 

DISTANCE.     (See  Locality.) 
between  competitors,  140,  188. 
effect  on  names,  188. 
effect  on  question  of  similarity,  592. 

DISTINCTION 

between  abstract  names  of  objects  and  trade  names,  81. 
corporate  and  other  names,  161. 
descriptive  names  and  names  in  public  domain,  411. 
interference  with  fixed  contract  and  with  uncompleted  contract,  362. 
proof  of  cases  involving  fanciful  name  and  those  involving  secondary 

meaning,  581. 
technical  trade-mark  and  unfair  competition  cases,  3. 
trade  libel  and  personal  libel,  477. 
trade-marks  and  trade  names,  386. 
rights  to  damages  and  to  profits,  712. 
unfair  competition  and  infringement  of  trade-mark,  387. 
unfair  competition  from  legal  standpoint  and  popular  standpoint,  2. 


814  Index 

I  Beferences  are  to  pages  | 

DISTINCTIVE 

technical  trade-mark  must  be,  379. 

DISTINGUISHING  FEATURES 

of  article,  copying  as  a  whole,  277. 

DOMESTIC  CORPORATIONS 

(See  Corporate  Names.) 
rights  of,  as  to  name,  165. 

DOUBLE 

meaning,  names  having,  101. 
trade  names  for  same  article,  101. 

DRAMATIC  COMPOSITION 

imitation  of,  534. 

DRESS 

(See  Labels,  Color,  Bottles,  Wrappers,  Cartons,  Boxes,  etc.) 
classification  of  cases  involving,  244  et  seq. 

collocation  of  features,  which  might  be  copied  singly,  is  unfair,  239. 
deception  may  arise  from  manner  of  printing,  2. 
designs,  devices  and  figures,  245. 
imitation  of  single  feature,  238. 
mere  diversity  of  color,  not  a  controlling  feature,  236. 
of  goods,  features  of,  as  technical  trade-marks,  380. 

labels,  259. 

employees,  112. 

stores,  112. 

wagons,  257. 
or  get-up  of  goods.    (See  List,  p.  233.) 

degree  of  similarity  in,  calculated  to  deceive,  235. 
resemblance  in  several  features  may  be  fair  if  these  are  common  to  the 
trade,  242. 

DUTY,  AFFIRMATIVE 

to  differentiate,  17L 
(See  Differentiate.) 

ELIMINATION  METHOD 

in  deciding  similarity,  240. 

EMACK  v.  KANE 

case  of,  488. 


Index  815 

[  References  are  to  pages  ] 

EMPLOYEE 

betrayal  of  secret  by,  304  et  seq. 

bound  by  implied  contract  not  to  disclose  secrets,  306, 308. 

definition  of,  as  used  here,  311. 

doing  business  under  the  name  of  an  employee,  may  be  unfair  competition, 

151. 
dress  of,  112. 
evidence  of  acts  of,  605. 
interference  with  contracts  of,  enjoined,  339. 
inventions  of,  while  in  employ  of  another,  308. 
manager  of  a  business  is  an,  so  far  as  betrayal  of  secrets  is  concerned,  306, 

note  40. 
may  be  enjoined  from  breaking  contract  with  employer,  341. 

from  disclosing  trade  secrets,  341. 
may  not  divulge  secrets  after  leaving  employer,  314. 
right  of,  to  exercise  own  inventive  skill,  310. 
rights  of,  on  leaving  employment,  182. 

of  one  who  has  left  employer,  to  use  employer's  name,  86. 
should  receive  notice  when  trade  secret  imparted  to  him,  310. 
secrets  discovered  by,  in  course  of  employment,  right  to  use,  304,  309  et 

seq. 

EMPLOYMENT 

actual  or  prospective,  interference  with,  371. 

ENGLISH 

act  of  1875, 424. 

cases,  summary  of,  re  power  of  equity  to  enjoin  libelous  statements,  477. 

cases,  effect  of,  on  American  Law  of  Unfair  Competition,  192. 

Procedure  Acts  of  1854  and  1873,  471. 

rule  as  to  intent,  summary  of,  615. 

Trade-Marks  Act,  425. 

effect  of,  on  old  equity  jurisdiction,  425. 

ENVELOPES 
copying,  250. 

EQUITY 

acts  to  protect  property,  22. 

American  methods  of  assessing  damages  in,  712  et  seq. 
early  powers  to  issue  injunctions  against  libel  and  slander,  472. 
'  jurisdiction  over  rights  in  names  and  marks  acquired  by  use,  17. 
jurisdiction  to  enjoin  libels  prior  to  1873,  472. 
protects  right  to  use  one's  own  name,  116. 
relief  is  two-fold,  716. 
will  enjoin  where  bad  faith  proved,  494. 
will  not  define  similarity  exactly,  584,  585. 


816  Index 

I  References  are  to  pages  I 

ESSENTIAL  ELEMENTS 

of  technical  trade-mark,  379. 

"  ESTABLISHED  IN  " 

use  of  term,  when  unfair,  695. 

ESTOPPEL 

fraud  may  estop  incorporators  from  denying  knowledge  of  defendant's 
rights,  177. 

EVIDENCE 

as  to  trade  secret  in  court,  301. 

use  of  a  trade-mark,  606. 
burden  of  proof,  602,  603. 

on  applicant  to  show  exclusive  use  under  Ten  Year  Law,  447. 
connected  with  comparison  of  names  or  marks,  581  el  scq. 
deceit  of  ultimate  purchasers  is  the  important  consideration,  593. 
difference  between  proof  of  cases  involving  fanciful  name  or  mark  and  one 

involving  secondary  meaning,  581. 
discovery  and  examination  before  trial,  605. 
inferences  and  presumptions,  607. 
judicial  notice,  605. 
loss  of  business  by  complainant  as,  604. 
necessity  of  proving  intent,  621.    (See  Chap.  XXII,  also.) 
of  acts  of  employees,  605. 
of  experts  as  to  meaning,  178. 
of  fraud  in  use  of  corporate  name,  177. 
of  registration,  effect  of,  606. 
of  intent,  character  of,  241,  580. 

what  constitutes,  629. 
of  investigators,  603. 

of  secondary  meaning,  what  constitutes,  70. 
of  similarity,  what  is,  582. 
presumption  of  continuance,  604. 
proof  of  actual  bona  fide  deceit  of  purchaser,  601. 
registration  prima  facie  proof  of  ownership,  458  et  seq. 
secured  at  instance  of  plaintiff  proper,  603. 
secret  motive  need  not  be  proved,  614. 

that  proportion  of  buyers  of  imitating  article  is  small,  no  defense,  590. 
to  prove  secondary  meaning,  596. 
weight  and  credibility  of,  605. 

EXAGGERATION 

in  dealer's  talk,  691. 

not  necessarily  misrepresentation,  674,  680,  691. 


Index  817 

I  iteferences  are  to  pages  1 

EXAMINATION 

before  trial,  605. 

EXCLUSIVENESS 

of  use,  413. 

EXCLUSIVE  RIGHT 

burden  of  proof  on  claimant  to  prove,  709. 

to  name  or  mark  not  necessary  to  action,  2  et  seq.,  9,  120. 

EXCLUSIVE  USE 

applicant  for  registration  must  show,  447. 
meaning  of  term,  446. 

EXEMPLARY  DAMAGES 
when  awarded,  372. 

EXPENSES 

of  defendant,  deduction  of,  from  profits,  718. 

EXPERT  EVIDENCE 

as  to  similarity,  584. 

EXPERTS 

deceit  of,  not  test  of  unfair  competition,  19. 

marks  gotten  up  by,  627. 

originating  marks,  held  more  strictly  accountable  for  effect  of  same  than 

others  are,  627. 
testimony  of,  as  to  meaning,  not  competent,  178. 

EXPERIENCE 

in  business,  right  to  advertise  after  sale  of  a  business,  56. 

EXPLANATORY  PHRASES 

and  words,  use  of  with  family  name,  124  et  seq. 

as  means  of  eUminating  confusion,  124. 

do  not  cure  unfair  similarity  in  packages,  272. 

rule  as  to,  inadequacy  of,  124,  133,  134. 

use  of  by  descendants  of  one  whose  name  has  been  sold,  63. 

full  name  instead  of  a  part,  125. 

ordered  in  preliminary  hearing,  644. 

EXPORT 

names  of  goods  intended  for,  108. 

EXTENT 

and  manner  of  use,  414. 

of  celebrity  of  trade-marks,  measure  of  value,  74. 

of  geographic  rights  in  mark,  28, 29,  206. 


818  Index 

[  Beferences  are  to  pages  1 

EXTENSION  OF  TRADE 

process  of,  29,  30. 

rights  of  first  user  to  extend  his  market  under  his  name,  29. 

EXTRAVAGANT 

claims  for  goods,  not  misrepresentations,  674,  680,  691,  693. 
dealer's  talk,  691. 

FACSIMILE 

making  a,  of  goods  of  another,  278. 

(See  Similarity.) 
signature,  use  of,  247. 

FAIR  DEALING 

protected  by  unfair  competition,  18. 

FAIR  NAME 

good-will  another  name  for,  31. 

FAIR  TRADE 

policy  of  law  to  encourage,  11. 

theory  that  in  unfair  competition  actions  court  aims  to  protect,  18. 

FALSE 

claim  to  be  a  corporation,  694. 

marks  on  goods  not  necessary  to  relief,  662. 

or  misleading  name,  use  of  for  a  corporation,  185. 

representation,  470. 

representations  regarding  a  competitor  which  are  not  libelous,  501. 

representations  to  customers  to  procure  breach  of  contract,  368. 

FAMILY  NAME 

as  corporate  names,  153. 

as  generic  or  general  names  of  articles,  143. 

as  nickname  or  catchword,  146. 

Baker  chocolate  cases,  127  et  seq.,  136. 

changing  one's  name  voluntarily,  may  be  enjoined,  151. 

decisions  ordering  use  of  full  name,  instead  of  surname  alone,  125. 

equity  has  power  to  direct  use  of  explanatory  words  with,  124. 

fortuitous  identity  of  defendant's  and  plaintiff's  names  may  be  medium 

of  fraud,  146,  note  46. 
full  name,  compelling  use  of,  125. 
injunction  against  unfair  use  of  form  of,  119,  653. 
is  incapable  of  exclusive  appropriation  in  trade,  118. 
may  become  abstract  name  of  object,  143. 


Index  819 

[  References  are  to  pages  ] 

FAMILY  NAME— Continued. 

nature  of  right  to  use  one's  own  name,  116. 
or  surname  as  name  of  corporation,  172. 

as  trade-mark,  403. 
prestige  attached  by  public  to,  115. 

proof  of  rights  in,  differs  from  proof  of  a  trade-mark,  120. 
purchase  of  right  to  use  rights  of,  63-64. 
right  of  son  and  father  to,  159. 

widow  to  husband's  name,  158. 
rights  of  descendants  as  to,  64,  153. 

first  user  of  surname  in  business,  152,  154. 

purchaser  of,  63. 
right  of  every  man  to  use  his  own  name,  57,  116,  117. 

every  man  to  use  his  own  name,  —  presumption  that  no  one  parts 
with  that  right,  39. 
right  to  use,  relation  of,  to  loss  of  business  by  unfair  use  of  name  by  another, 

124. 
Rogers  silver  cases,  128  et  seq. 
sale  of  name  in  bankruptcy  or  assignment  for  creditors,  48. 

right  to  use  one's  own  name  for  unfair  use,  150, 175, 176. 

right  to  use,  in  connection  with  particular  article,  154. 
secondary  or  acquired  meaning  of,  137. 
surname  acquired  otherwise  than  b}'  descent,  149. 

unfair  use  of,  cured  by  use  of  full  name,  125. 

which  by  usage  becomes  abstract  name,  143. 
transfer  of,  cannot  be  made  for  unfair  use,  150, 175,  176. 
use  of,  a  natural  right,  124. 

by  corporation  in  which  there  is  no  one  bearing  that  name,  186. 

first  name,  159. 

one's  own  name,  81,  82,  116,  119,  137  et  seq.,  184. 

one's  own  name  in  corporate  name,  174. 

to  name  a  corporation,  152,  174. 

without  consent  of  owner,  247. 

with  explanations,  124  et  seq.,  140. 
used  as  common  names  of  articles,  139. 
voluntary  change  of,  151. 

"  FAMOUS  " 

use  of  word,  148. 

FANCIFUL  WORDS 

use  of,  396. 

FATHER  AND  SON 

use  of  same  name  by,  in  samT*  line  of  business,  159. 


820  Index 

I  References  arc  to  psKes  1 

FEATURES 

cases  showing  unfair  use  of  general  features  of  packages,  etc.,  261. 
common  to  a  trade,  242,  243,  244,  284. 
copying  a  collocation  of,  239. 

single,  284. 
distinguishing,  copying,  277. 
resemblance  in  several,  242. 

FEDERAL  ACT 

effect  of  the,  425,  459. 

FEDERAL  COURTS 

jurisdiction  in  unfair  competition  cases,  636,  637. 
overt  acts  done  in  foreign  countries,  637. 

FEES 

repayment  of,  458. 

FIGURES 

use  of,  288. 

FINAL  INJUNCTIONS 

general  considerations,  648. 
procedure  in  England,  650. 
province  of  court  in  settlement  of,  649. 

"  FINEST  GOODS  MADE  " 
use  of  phrase,  692. 

FIRST 

American  unfair  competition  case,  5. 

user  of  surname  in  business,  rights  of,  152,  154,  200. 

FIRST  NAME.     (See  Family  Name.) 
use  of,  159. 

FIRST  USE 

(See  Prioritt.) 

FIRST-USER 

rights  of,  620. 

FLAGS 

not  registrable,  433,  434. 


Index  821 

I  Beferences  are  to  pages  I 

FOREIGN 

and  domestic  corporations,  rights  of,  as  to  name,  165,  171. 

countries,  unfair  acts  done  in,  jurisdiction  of  U.  S.  courts  over,  637. 

language,  names  in,  99. 

market,  effect  of  on  use  of  names,  215. 

names  enjoined,  73. 

words  as  names  of  goods,  99. 

words  as  trade-marks,  405. 

FOREIGN  CORPORATIONS 

(See  Corporate  Names.) 

FOREIGNERS 

application  by,  for  trade-mark,  431. 
rights  of,  as  to  trade-marks,  410. 

FOREIGN  LANGUAGE 

words  from,  as  names  of  goods,  99. 

FORM 

(See  Shape.) 
defense  that  form  in  question  is  in  common  use,  659. 
imitation  of,  107. 

in  dress  or  get-up  copied,  but  nothing  else  copied,  238. 
of  patented  articles,  use  of  on  expiration  of  patent,  288. 
will  be  protected  in  combination  with  other  features  of  an  article,  240, 

241,  271. 

FORMER  EMPLOYEE 

(See  Employee.) 

FORMER  PARTNER 

injunction  against,  655. 

FORMER  STOCKHOLDER 

injunction  against,  655. 

"  FORMERLY 

of,"  88,  note  12,  109,  note  83. 
of,"  used  as  to  locality,  56,  note  59. 
operator  at,"  87,  note  9. 
with,"  86. 

FORMS 

circular  or  notice  of  pendency  of  suit,  496. 
final  decree  against  corporate  name,  654. 


822  Index 

(  Beferences  are  to  pages  1 

FORMS— Continued. 

final  decree  against  use  of  family  name,  G53. 

form  of  decree  directing  correction  of  unfair  use  of,  651. 

injunction  against  use  of  a  color,  form,  etc.,  652. 

against  use  of  name  of,  655. 

against  ex-partner,  655. 

against  former  member  of  corporation,  655. 

against  owner  of  patent,  655. 
of  final  decree,  649. 

of  unfair  competition.    (See  Unfair  Competition.) 
petition,  prayer  in,  649. 

FORMULAS 

transfer  of  secret,  64. 

FRAME 

likeness  in  frames  of  serving  machines,  278. 

FRATERNAL 

societies,  unincorporated  names  of,  187. 

FRAUD 

elements  of,  in  use  of  names  and  marks,  9, 243. 
in  use  of  corporate  name,  177. 
is  basis  of  action  for  unfair  competition,  18. 
presumption  of,  629. 

FRAUDULENT  ADVERTISING 

"Printers  Ink"  model  statute  against,  634. 

FRAUDULENT  USE 

of  coincidence  in  meaning  of  names,  101. 
of  trade-marks,  463. 

FRAUDULENT  INTENT 

(See  Intent.) 

FREEDOM  OF  TRADE 

discussion  of  by  courts,  323. 
restriction  of,  against  public  policy,  322. 
unfair  competition  does  not  curtail  it,  11. 

"  FROM  " 

use  of  word,  87,  88  note. 

FUNCTIONS 

of  trade-marks,  376. 


Index  823 

( References  are  to  pages  ] 

GENERAL  IMPRESSION 

is  test  of  what  is  similarity,  582. 

GENERAL  RESEMBLANCE 

of  goods,  cases  involving,  269  et  seq. 

GENERAL  USE 

word  in,  when  used  also  in  trade  sense,  trade-mark  rights  rest  on  secondary 
meaning,  67. 

GENERIC 

name  cannot  be  used  as  a  trade  name,  391. 
names  of  articles,  family  names  as,  143. 
or  secondary  meaning  of  personal  name,  137. 

«  GENUINE  » 

use  of  word,  148. 

GEOGRAPHICAL  NAMES 

arbitrary  use  of,  191,  219,  223. 

as  names  of  natural  products,  217. 

association  of,  with  localitj"^  bearing  name,  must  be  clear,  203. 

as  trade  names  must  be  used  truthfully,  226. 

degree  of  resemblance  in,  necessary  to  create  similarity,  208. 

distinction  between  local  names  and  names  associated  with  business,  204. 

effect  of  moving  plant  or  business,  216. 

effect  of  removal  of  business,  76. 

extent  of  district  to  which  name  applies,  206. 

indicating  process  of  manufacture,  190,  213,  219. 

quality,  228. 

origin  falsely,  208. 

source  falsely,  208. 
kinds  of,  190.    (See  List  op  Section  Heads.) 
length  of  time  of  use  necessary  to  acquire  secondary  meaning,  207. 
may  acquire  abstract  meaning,  228. 
may  be  used  arbitrarily  as  trade  names,  223,  227. 
names  of  cities  as,  213. 

not  material  that  plaintiff  had  no  special  right  to,  at  time  of  adoption,  231. 
or  place  names,  399. 
priority  in  use  of,  200. 
question  not  so  much  character  of  right  acquired  but  kind  of  use  to  which 

it  is  put,  226. 
registration  of,  433,  440. 
relative  location  of  plants  of  rivals  using  same  name,  effect  of,  212.    (See 

Location.) 
secondary  meaning  of,  68,  203,  219.    (See  Secondary  Meaning.) 


824  Index 

I  Beferpnccs  arc  to  pages  1 

GEOGRAPHICAL  NAMES— Continued. 

similarity  of,  degree  of  resemblance  necessary  in,  208. 

universal  knowledge  of  use  of,  not  necessary  to  protect,  205. 

used  as  one  of  a  combination  of  words,  402. 

use  of,  must  be  truthful  and  fair,  226. 

who  may  sue  on  behalf  of  seA^eral  using,  200. 

GEOGRAPHIC  EXTENT 

of  right  in  trade-marks  based  on  priority,  28. 

GEOGRAPHIC 

limits  in  which  secondary  meaning  is  protected,  72. 
location  of  competitor,  592. 

GET-UP  OF  GOODS 

cases  involving  likeness  in,  273. 
copying  whole,  including  name,  264. 
similarity  of,  basis  of  presumption  of  fraud,  626. 
(See  Dress.) 

"  GLENFIELD  STARCH  " 

case,  193. 

GOOD  FAITH 

in  use  of  name,  defendant's  opinion  as  to  use  disregarded,  623. 
may  relieve  defendant  from  paying  damages,  735. 
required  of  vendors  of  names  and  marks,  46. 

GOODS.     (See  Merchandise.) 
change  in  manufacture  of,  410. 
defective,  responsibility  of  manufacturer  for,  635. 
duty  to  ditTerentiate  one's  goods  from  those  already  in  the  market,  634. 
fact  that  plaintiff's  goods  are  worthless  or  useless  is  no  defense,  669. 
foreign  words  as  names  of,  99. 
initials  as  names  of,  106. 
intended  for  export,  names  of,  108. 
libel  and  slander  of,  470. 

made  under  secret  process,  inducing  breach  of  contract  for  sale  of,  357. 
numerals  and  letters  as  names  of,  103. 

used  to  designate  grade,  103. 
of  competitors,  defamation  of,  550. 
of  rivals,  disparagement  of,  470,  550. 
of  same  descriptive  qualities,  test  as  to,  452. 
of  third  party,  passing  off,  561. 
of  unknown  maker,  association  of  name  with,  77. 
on  which  trade-mark  used  must  be  on  market,  415. 
packing  of,  to  conceal  markings,  248. 


Index  825 

I  References  are  to  pages  I 

GOODS— Continued. 

.sale  of  inferior  goods,  or  seconds,  as  usual  quality,  563. 

several  trade-marks  for  same,  382. 

style  of,  numerals  to  represent,  106. 

substitution  of  inferior  for  better  grade  in  containers,  254. 

GOOD-WILL 

and  personality,  83,  281,  287. 

another  name  for  honesty,  reliability,  31. 

association  of,  with  name  of  concern,  61. 

attaching  to  personality,  the  benefit  of  the  public's  preference  for  one  par- 
ticular person,  83,  280,  281,  287. 

attached  to  goods,  33. 

attaching  to  leased  premises  during  lease,  83. 

basis  of  protection  of,  36. 

colorable  purchase  of,  36. 

definitions,  32,  34. 

effect  of  locality  on  sale  by  partner  of  share  of,  57. 

elements  of,  35. 

German  view  of,  37. 

impairment  of,  58,  59. 

importance  of,  in  commercial  life,  31. 

in  hotel  name,  34. 

in  interest  in  trade-mark,  24. 

intangible  interest  in  mark  is,  24. 

is  property,  32. 

is  represented  by  all  kinds  of  commercial  insignia,  35. 

kinds  of,  32. 

local,  33. 

of  education  and  charitable  institutions,  167,  168. 

of  partnership,  33. 

of  professional  men,  33. 

of  retail  shop  on  sale  of,  60. 

personal,  33. 

purchase  of,  at  auction,  61. 

relation  of,  to  trade-mark  and  trade  insignia,  35. 

right  of  son  to  good-will  of  father's  business,  155. 
to  use  list  of  customers,  34,  316. 

rights  of  manufacturer  as  to  his  good-will  in  name  under  which  his  goods 
are  sold  by  a  customer,  47. 

sale  of,  54,  154,  155. 

of  entire  property,  38. 

trade-mark  is  symbol  of,  24,  378. 

unfair  advertisement  of  possession  of,  37. 

value  of,  depends  on  nature  of  sale,  39. 

valuation  of,  65. 

which  is  not  transferable,  37. 


826  Index 

i  Beferences  are  to  pages  J 

GRADE 

of  goods,  numerals  and  letters  used  to  designate,  103. 

substitution  of  cheaper  grade  when  better  grade  called  for,  256-257. 

GROUNDS  OF  ACTION 

for  unfair  competition,  18,  28.    (See  Action.) 

GROWTH 

of  unfair  competition  doctrine,  5. 

HAT  OF  EMPLOYEES 

signs  on,  112. 

HISTORICAL 

early  cases  of  unfair  competition  in  America  and  England,  4. 

HONEST  AND  FAIR  DEALING 

promotion  of,  ground  of  action  of  unfair  competition,  18. 

HONESTY 

good- will  another  name  for,  31. 

HOTEL 

good-will  in,  84. 

lessee's  right  to  increased  value  of  name  of,  due  to  his  efforts,  85.  • 

names  of,  82. 

rights  of  lessee  in,  84. 

right  of  lessee  to  use  name  of,  84. 

right  of  owner  of  premises  in,  83,  84. 

right  to  name  of,  on  sale  of,  42. 

IDEM  SONANS 

names,  what  are,  93,  95. 

IGNORANCE 

of  plaintiff's  rights  no  defense,  611. 
plea  of,  351. 

IMITATION 

effect  of,  depends  very  largely  on  propinquity,  592. 
of  articles  as  a  whole,  278. 
of  covers  of  book,  251. 
of  salient  features,  263,  590. 
(See  Simulation  of  Articles  Themselves,  Copying,  Similarity.) 

IMMINENT 

actual  injury  to  plaintiff  must  be,  for  action  for  unfair  competition,  624. 


Index  827 

I  References  are  to  pages  I 

IMPLIED  CONTRACT 

employees  bound  by,  306. 

IMPORTATION 

of  articles  bearing  infringing  marks,  466. 

"  IMPORTED  " 

use  of  term,  686. 

INACCURACIES 

minor,  no  defense,  674. 

INACTION 

or  acquiescence  on  which  others  have  a  right  to  rely,  706. 

INCORPORATION 

effect  gives  no  right  superior  to  what  the  concern  incorporated  had  prior 

thereto,  163. 
of  business,  effect  of,  on  right  to  name,  163. 
under  nickname  of  rival,  169. 

INCORPORATORS 

duty  of,  as  to  name,  162. 
(See  Corporate  Names.) 

INDIVIDUAL  RIGHTS 

as  basis  of  unfair  competition,  21. 

INDIVIDUAL 

use  of  terms  "Works,"  "Company,"  etc.,  by,  181. 

INFERENCES 

and  presumptions,  607. 

INFERIOR  GOODS 

substitution  of,  in  dress  of  goods  of  higher  grade,  256. 

INFORMATION  AND  BELIEF 

allegations  on,  571. 

IMMORAL  MATTER 

not  registrable,  434. 

INFORMATION 

interference  with  contracts  to  furnish.  342. 


828  Index 

I  Beferences  are  to  pages  ) 

INFRINGEMENT 

appropriation  of  methods  and  ideas  of  competitor,  552. 

court  may  destroy  infringing  marks,  462. 

discontinuing  before  suit  is  brought,  effect  of,  641,  654. 

distinction  between,  and  unfair  competition,  387. 

giving  rebates  on  transportation  charges,  567. 

interference  with  a  competitor's  source  of  raw  material,  212. 

liability  for,  459. 

local  price  cutting,  567. 

notice  of,  733. 

passing  off  goods  of  third  party,  561. 

price  cutting  of  branded  goods,  568. 

purchase  of  stock  in  competing  concerns,  568. 

sale  of  inferior  goods,  or  seconds,  as  usual  quality,  563. 

use  of  bogus  independent  concerns,  560. 

INGREDIENTS 

change  of  ingredients,  416. 
misrepresentations  as  to,  674,  680. 

must  be  as  to  those  which  are  material,  680. 

INITIALS 

as  names  of  goods,  103,  106. 

use  of,  246. 

"A.  G."  and  "A.  G.  Co.,"  102. 

"A.  O.,"  286. 

"B.  &  M.,"  100. 

"B.  A.  S.,"  102. 

"B.  &  A.,"  170. 

"B.  O.,"  286. 

"C.  G.  v.,"  100. 

"C.  B.,"  106. 

"C.  B.  &  Q.,"  170. 

"C.  C.  C.,"  265. 

"C.  O.,"  286. 

"D.  L.  &W.,"  100. 

"F.  I.  A.  T.,"  100. 

"G.  E.,"406. 

"H.  H.,"  105. 

"L.  L.,"  103. 

"M.  F.,"  and  "M.  F.  H.,"  106. 

"N.  S.,"406. 

"O.  C,"  406. 

"P.  B."and"F.  B.,"  112,  note. 

"S.  &  W.,"  100. 

"T.  O.  C.  &  L.  Co.,"  103. 

"U.  M.  C,"  170. 


Index  829 

[  References  are  to  pages  | 

INITIALS— Continued. 
"U.  F.,"  204,  note. 
"V.  0.  S.,"  678. 

INJUNCTIONS 

against  breach  of  contract  by  disclosure  of  trade  secrets,  297. 

false  charges  and  threats,  488. 

false  statements  concerning  competitor,  486. 

issuing  of  threatening  circulars,  488. 

libel  and  slander  essential  to  proper  relief,  490. 

use  of  color,  size,  form,  etc.,  652. 

use  of  family  names,  scope  of,  653. 

use  of  foreign  names,  73. 

use  of  name  of  former  partner  or  former  member  of  corporation,  655. 

use  of  name,  portrait  or  signature  of  another  without  his  consent, 
247. 
before  act  is  committed,  qida  timet,  479,  639. 
compelling  use  of  distinguishing  marks,  119. 
directing  use  of  explanatory  words  or  phrases,  124  et  seq.,  644. 
English  Procedure  Acts  of  1854, 1873,  as  related  to  injunction,  471. 
final,  form  and  scope  of,  648. 
form  of,  319. 

geographic  extent  of  protection  against,  206. 
identity  and  quality  of  goods,  643. 
injury  complained  of  must  be  imminent,  313. 
intent  to  intimidate  customers,  not  fairly  warn  them,  is  necessary  element 

for,  493. 
is  only  effective  remedy  in  some  cases,  323,  490.    (See  Introduction.) 
jurisdiction  of  equity  prior  to  1873,  472. 

may  issue  despite  discontinuance  of  unfair  acts  prior  to  suit,  641, 654. 
not  granted  ex  parte  unless  clear  case  made  out  from  affidavits,  642. 
procedure  in  England,  650. 

refused  when  defendants  agree  to  discontinue  use  of  offending  article  pend- 
ing suit,  642,  note, 
should  issue  against  libel  and  slander  of  trade  name,  etc.,  when  plaintiff's 

rights  are  clear,  500.    (See  Preliminary  Injunctions,  Remedies.) 
temporary  relief  before  trial,  642. 
threats  of  prosecution  must  be  shown  to  warrant  issue  of,  491. 

INJURY 

actual  injury  to  plaintiff  must  be  imminent  for  action  for  unfair  compe- 
tition, 624. 
to  another's  business,  actionable,  333. 

INSURANCE  AGENT 

not  confidential  employee,  369. 


830  Index 

I  References  are  to  pages  ) 

INTENT  TO  DEFRAUD 

acts  planned,  but  not  likely  to  occur,  not  basis  of  presumption  of  intent,  624. 

acts  showing,  must  be  imminent,  624. 

American  decisions  on,  615. 

cases  holding  it  must  be  proved,  617. 

cases  holding  proof  of  intent  is  immaterial,  611. 

confusion  of  authority  on,  610. 

contract  provisions  showing  act  of,  622. 

definition,  608. 

definition  of,  the  character  which  the  law  imputes  to  an  act,  626. 

denial  of,  unavailing  to  defendant  as  a  defense,  622. 

disclaimer  of,  has  no  effect,  240,  611,  622,  662. 

division  of  cases  as  regards,  610. 

English  rule,  summary  of,  615. 

evidenced  by  small  details,  629. 

evidence  of,  241, 580. 

what  constitutes,  629. 
intention  to  imitate  and  intention  to  defraud  different,  608. 
is  proof  of  it  material  to  action  for  unfair  competition,  623. 
lack  of,  as  a  defense,  611,  622. 
must  it  be  proved?  608. 

on  defendant's  part  not  important  in  technical  trade-mark  cases,  24. 
presumption  of,  from  selUng  goods  so  that  others  may  pass  them  off,  629. 

from  innocent  adoption  of  name  already  in  use,  620. 

of  intent  to  do  what  results  from  one's  acts.    (See  Presumption.) 
proof  of,  in  use  of  family  names,  185. 

in  use  of  corporate  names,  623. 

may  warrant  plaintiff's  recovery  of  defendant's  entire  profits,  726. 
question  of,  is  a  defense,  609.    (See  Malice.) 

plea  raised  by  defense,  629. 
rights  of  first  user  of  mark,  arising  out  of  priority,  620. 
to  intimidate  customers,  not  to  fairly  warn  them,  493. 
unimportant  facts,  not  a  basis  of  presumption  of,  625. 
when  presumed,  264,  625,  629. 

INTEREST 

when  added  to  amount  of  damages,  720. 

INTERFERENCE  WITH  BUSINESS 

by  disclosure  of  secret,  297. 

by  false  representations  to  customers,  368. 

statements  and  threats,  367,  368. 
by  issuance  of  circulars,  369. 
by  multiplicity  of  suits,  369. 
by  third  person  enjoined,  336. 
by  threats  of  suit,  etc.,  369. 


Index  831 

I  References  are  to  pages  I 

INTERFERENCE  WITH  BUSINESS— Continued, 
contract  must  be  valid,  348. 
elements  of  prima  facie  case  of,  344,  345. 
grounds  of  action  for,  337. 

ignorance  of  existence  of  contract  no  defense  against  injunction,  351. 
justification  of,  350. 
malicious,  329. 

must  such  acts  be  accompanied  by  threats,  violence,  etc.,  341. 
New  York  rule  as  to,  352. 

notice  to  defendant  of  existence  of  contract,  345,  349. 
of  lea.se,  procuring  breach  of,  348. 
personal  in  character,  361. 
simulated  competition,  369. 
summary,  344. 

United  States  Supreme  Court  position  as  to,  338. 
what  constitutes,  344. 
what  is  legitimate,  364. 

with  a  competitor's  contracts  and  business  generally,  322,  333. 
with  a  contract,  causing  one  to  refuse  to  complete  it,  345,  349. 
with  a  neighbor  by  acts  done  on  one's  own  land,  324  et  seq. 
with  business  generally,  322,  333,  367. 

with  conditional  contracts  between  manufacturers  and  retailers,  355. 
with  competitors'  customers,  367. 

salesmen,  368. 
with  contract  for  furnishing  information,  342. 
with  contract  for  sale  of  goods  made  by  secret  process,  357. 
with  contract  by  offering  goods  at  lower  prices,  350. 
with  contract  not  affected  by  duration  of  contract,  349. 
with  contract  not  to  re-enter  business,  351. 
with  contract  of  employment,  actual  or  prospective,  371. 
with  contracts  with  retailers  as  to  prices,  356. 
with  contract  with  opera  singer,  340,  341. 
with  contract  of  passengers  with  transportation  company,  343. 
with  fixed  contract  and  with  uncompleted  contract,  distinction  between, 

362. 
with  proposed  or  prospective  contracts,  361. 
with  servants,  338. 
with  trade,  12. 

INTERFERENCE  PROCEEDINGS 

in  registration  of  trade-mark,  451. 

INTIMIDATION 

of  competitor's  customers,  493. 

INVENTED 

or  fanciful  words,  396. 


832  Index 

f  References  are  to  pages  | 

INVENTION 

priority  of,  against  priority  of  use,  412. 

INVENTOR 

name  of,  right  of  buyer  of  invention  to  use,  291. 
originator  of  article,  sale  of  name  by,  56. 

rights  of,  to  inventions  discovered  when  employed  by  another,  308. 
(See  Employer.) 

INVESTIGATORS 

(See  Detectives.) 

JOBBER 

deceit  of  ultimate  purchaser,  not  of  jobber  or  retailer,  important,  593, 

665  et  seq. 
defense  that  jobber,  not  defendant,  did  the  unfair  acts,  664. 
name  of,  from  whom  goods  bought,  a  secret  of  trade,  314. 

JOINDER 

of  causes  of  action,  570. 

JUDICATURE  ACT 

of  1873,  472,  474. 

JUDICIAL  NOTICE 

will  be  taken  of  facts  of  common  knowledge,  605. 

JURISDICTION 

of  courts  in  infringement  of  copyright  cases,  545. 

of  courts  in  infringement  of  unpublished  literary  productions,  545. 

of  courts  in  unfair  competition  cases,  636. 

of  courts  respecting  registered  trade-marks,  460. 

of  equity  to  enjoin  libels  prior  to  1873,  472. 

of  United  States  courts  over  unfair  acts  done  abroad,  637. 

JUSTIFICATION 

discussion  of  what  constitutes,  330  et  seq. 
of  interference  with  contracts,  350. 

KAY 

Lord,  summary  of  law  of  names,  81. 

ElIDD  V.  HORRY 

case  of,  483. 

KNOWLEDGE 

does  not  warrant  inference  of  consent  to  use  by  another,  697,  701. 
of  prior  use,  must  it  be  shown,  245. 


Index  833 

( References  are  to  pages  f 

LABELS 

are  in  reality  trade-marks,  235. 

band  of  paper  around  loaf  of  bread,  282. 

color  of,  253. 

concealment  of  a  part  of,  is  unfair,  248. 

containing  no  salient  feature,  but  in  which  whole  get-up,  including  name, 
is  unfair,  264. 

copying  directions  for  use,  247. 

classification  of  label  cases,  261. 

false,  on  bottles,  254. 

features  of  an  action  as  to,  260. 

having  general  resemblance  and  likeness  in  names,  but  where  injunction 
was  refused,  269. 

involving  no  similarity  in  name,  but  in  general  appearance  amounting  to 
unfair  competition,  270. 

in  which  names  are  not  similar  and  general  get-up  held  not  unfair,  273. 

in  which  the  salient  feature  is  a  device  or  catchword  which  is  copied,  263. 

kinds  of,  261. 

misleading  use  of  one  proper  in  itself,  248. 

printers  of,  may  be  made  defendants  jointly  with  persons  using  labels  un- 
fairly, 638. 

purchaser  is  not  bound  to  compare  carefully,  264. 

reading  matter  on,  39,  247. 

regulation  or  stock  labels,  right  to  sell,  549. 

removing,  254. 

sale  of  assignor's  labels  in  bulk  by  assignee,  unfair,  49. 

selling,  with  intent  to  defraud,  549. 

simulation  of,  in  which  a  name  is  the  principal  feature,  261. 

taking  labels  off  boxes,  etc.,  and  putting  on  others,  254. 

use  of  autograph  signatures  in,  246. 

which  are  not  registered  or  copyrighted,  260. 

which  are  not  trade-marks  are  protected,  234. 

LABOR  CASES 

and  doctrine  of  interference  with  contract,  335. 

LACHES 

(See  Acquiescence.) 
acquiescence  which  makes  it  inequitable  to  claim  rights,  699. 
common-law  trade-mark  may  be  lost  by,  30. 
differs  from  acquiescence,  699. 
effect  on  name,  82. 

in  the  sense  of  mere  delay  in  taking  action,  700. 
kinds  of,  699. 

material  delay  may  bar  right  to  accounting  for  profits,  703. 
may  bar  right  to  accounting,  703,  732. 


834  Index 

I  fteferences  are  to  pages  | 

LACHES— Continued. 

may  bar  right  to  demand  destruction  of  offending  goods,  704. 
may  bar  right  to  prchminary  injunction,  705. 
may  be  evidence  of  fraudulent  intent,  494. 

one  first  using,  may  revoke  license  implied  from  use  without  right,  701. 
silence  with  knowledge  presumes  a  consent  lasting  only  so  long  as  the 
silence,  702. 

LABOR  UNION 

interference  with  contract  by,  328,  335. 

LANDLORD 

influencing  tenants  not  to  deal  with  certain  companies,  366. 

"  LATE  OF  FIRM  OF  " 

use  of  term,  87  and  note. 

"  LATE  WITH  " 

use  of  term,  87. 

"  LATELY  WITH  " 

use  of  term,  268. 

LEASE 

procuring  a  breach  of  provisions  of,  348. 

LEGAL  BASIS 

of  action  for  unfair  competition,  17. 

of  hotel,  right  to  increased  value  of  name  due  to  his  efforts,  85. 
of  theatre,  right  of,  to  use  name  of  theatre,  45. 
rights  of,  to  hotel  name,  84. 

LETTERS 

libelous,  power  of  chancery  to  enjoin,  474. 

may  be  secret  property,  321. 

right  to  use  those  written  by  others,  473. 

LETTERS  OF  ALPHABET 

and  figures,  use  of,  288. 
as  names  of  merchandise,  103. 
as  trade-marks,  406. 
to  mark  goods  for  quality  of  grade,  103, 
"  use  of,  on  parts  of  goods,  107. 
use  on  repair  parts,  107. 


Index  835 

[  References  are  to  pages  ] 

LIBEL  AND  SLANDER 

American  cases,  479  et  seq. 

by  ex-employee,  injunction  against,  500. 

case  of  Emack  v.  Kane,  488. 
Kidd  V.  Horry,  483. 

charges  of  infringement  and  threats  of  prosecution  made  in  bad  faith, 
488. 

damages  for,  378. 

difference  between  trade  libel  and  personal  libel,  477. 

early  cases  of  injunctions  against,  472. 

English  procedure  acts  relating  to,  471. 

equity  will  enjoin  to  protect  property  against,  472  et  seq. 

false  representations  regarding  a  competitor  which  are  not  libelous,  501. 

general  American  rule,  485. 

importance  of  question  in  United  States,  477. 

instance  of  preliminary  injunction  to  prevent  injury  to  business  from, 
479. 

jurisdiction  of  equity  over,  prior  to  Procedure  Acts  of  1873, 472. 

not  libelous  per  se,  496. 

of  business  names  and  reputation,  470. 

of  goods,  470. 

of  reputation,  273. 

qualification  of  rule,  486. 

right  to  restrain  issue  of  threatening  circulars,  488. 

statutes  as  to  libels,  effect  of,  416. 

do  not  oust  equity  of  jurisdiction,  504. 

summary,  505. 

summary  of  English  cases,  as  to  original  powers  of  courts  of  equity  to  en- 
join, 477. 

suits  at  law  against,  delay  in,  479. 

theory  that  delay  of  suit  at  law  a  basis  for  issuing  injunction  against,  492. 
that  threats  must  be  proven  to  warrant  issuing  injunction,  491. 

when  preliminary  injunction  against  should  issue,  479. 

LICENSE 

first  user  of  name  or  mark  may  revoke  license  implied  from  laches,  701. 
of  trade-mark  rights,  45. 

revocable  (not  consent)  is  to  be  presumed  from  silence  of  owner  of  mark  or 
name  used  by  others  without  right,  701. 

LIKENESS 

in  get  up,  cases  involving,  273. 

LIST  OF  CUSTOMERS 

fraudulently  obtained,  may  be  ordered  destroyed,  316,  318. 
is  secret  property,  317. 
use  of,  34,  306. 


836  Index 

[  References  are  to  psges  I 

LITERARY  PROPERTY 

doctrine  of  unfair  competition  as  applied  to,  514. 

jurisdiction  of  courts  in  protecting,  545. 

publication  of  literary  work  condition  precedent  to  obtaining  copyright,  510. 

title  of  literary  work  may  acquire  secondary  meaning,  516. 

trade-mark  rights  arising  in  connection  with,  512. 

unfair  competition  in  the  use  of,  507. 

use  of  author's  name,  543t 

what  constitutes  publication  of,  611. 

LITHOGRAPHERS 

of  labels,  etc.,  liability  of,  667. 

LOCATION— LOCALITY 

choice  of  new  stand  by  vendor  of  a  business,  60. 

distance  between  competitors'  places  of  business,  effect  on  names,  29,  140, 

188. 
distinction  between  name  of  locality  and  name  associated  with  business,  204. 
effect  of  assignment  or  lease,  45, 46. 

on  name,  45,  46,  73. 

on  transfers  of  a  business,  57. 

removal  of  plant  or  business  on  use  of  geographic  names,  216. 

on  sale  by  partner  of  share  of  good-will,  57. 

of  two  persons  using  same  surname  as  business  name  in  same  city,  141, 
142. 
fact  that  plaintiff  has  not  extended  his  business  to  defendant's  territory,  73. 
in  which  a  secondary  name  becomes  known,  73. 

in  which  reputation  of  goods  must  exist  to  create  secondary  meaning,  76. 
name  of,  must  be  closely  associated  with  goods  bearing  that  name,  203. 
of  competing  store  set  up  by  ex-stockholder,  176,  note  32. 
of  competitors,  effect  on  question  of  similarity,  592. 
of  markets  of  parties,  effect  of,  29. 
of  new  stand  set  up  by  one  who  has  sold  out,  57. 

of  plaintiff  and  defendant  has  important  bearing  on  question  of  priority,  622. 
of  plants  of  rivals,  effect  on  name,  212. 
of  signs,  truthful  in  themselves,  may  be  fraudulent,  110. 
of  stand  or  store  of  defendant  evidence  of  fraud,  175. 
partner  who  sells  share  of  good-will  cannot  compete  in  same,  57,  58. 
residence  in,  does  not  give  unlimited  right  to  use  name  of  locality  as  trade- 
mark, 211. 
territorial  extent  of  trade-mark  right,  417  et  seq. 
value  of  name  based  on  usage  in  particular  locality,  76. ' 
vendor  of  newspaper  can  set  up  new  plant  in  same,  67.  j 

LOSS  OF  BUSINESS 

by  complainant  as  evidence,  604. 


Index  837 

1  Seferences  are  to  pages  J 

LUMLEY  V.  GYE 

and  later  cases,  340. 

MADE-UP 

or  artificial  words,  91. 

MAGAZINES 

locality  in  which  they  circulate,  effect  of,  540. 
names  of,  535. 

MAIL 

address,  unfair  use  of,  223. 
(See  Letters.) 

MAKER  OF  GOODS 

defense  that  defendant  was  merely,  for  another,  667. 
misrepresentation  as  to,  684. 

MALICE 

definitions  of,  329,  330. 

does  not  always  create  a  cause  of  action,  329. 

does  it  make  an  unactionable  act  actionable?  330. 

injury  to  another,  done  with,  329. 

in  the  sense  of  ill-will,  not  a  necessary  ingredient  of  action  for  interference 

with  contract,  344. 
relation  of,  to  interference  with  business  of  another,  329. 
what  constitutes  justification,  332. 

MANAGER 

of  a  business  is  employee,  so  far  as  betrayal  of  secrets  is  concerned,  307, 

312. 
rights  of  former,  87. 
using  name  of,  as  trade  name,  151. 

MANUFACTURE 

misrepresentation  as  to,  681. 

MANUFACTURER 

(See  U.  S.  Supreme  Court,  Beecham  Pill  case.) 
conditional  contracts  of,  with  retailers,  including  breach  of,  355. 
of  offending  article  may  be  joined  with  other  sellers  of  article  as  defendants, 
639. 

(See  Merchandise.) 
responsibility  of,  for  defective  goods,  635. 
rights  of,  as  to  his  good  will  in  name  under  which  his  goods  are  sold  by  a 

customer,  47. 
secondary  meaning  of  name  of,  204. 


838  Index 

( Beferences  are  to  pages  ) 

MARKET 

foreign,  effect  of  on  use  of  names,  215. 

location  of,  of  parties,  effect  of,  29. 

of  goods,  extent  and  locality  of,  important  as  to  names,  207. 

MARKINGS  ON  PACKAGES 

concealing,  248. 

MARKS 

court  may  destroy  infringing,  462. 

defense  that  marks  are  in  common  use,  659. 

definition  of,  373. 

distinguished  from  business  names,  80. 

effect  of  two  persons  using  same,  29. 

exclusive  right  to,  not  necessary  to  action,  2,  26. 

first  user  of,  rights  of,  620. 

fraudulently  used,  463. 

gotten  up  by  experts,  627. 

how  protected,  234,  235. 

how  they  differ  from  trade-marks,  234, 235. 

importation  of  articles  bearing  infringing  marks,  466. 

indicating  selector,  not  maker,  381. 

intangible  interest  in,  part  of  good- will,  24. 

property  rights  in,  which  are  not  technical  trade-marks,  23, 26. 

transfer  of.    (See  Transfer.) 

MASTER  AND  SERVANT 

(See  Employee  and  Agents.) 

MATERIAL,  RAW 

use  of  same  by  competitors,  212. 

MATERIALMEN 

enjoined  for  breach  of  contract  with  builders,  338. 

MAXIMS 

"damnum  absque  injuria,"  609. 

"ex  turpi  causa  non  oritur  actio,"  671. 

"he  who  comes  into  equity  must  do  so  with  clean  hands,"  671,  675,  691. 

"nullum  tempus  occurrit  regi,"  707. 

"  Rem  facias,  rem,  si  possis,  recte,"  etc.,  27,  note  35. 

"sic  utere  tuo  ut  alienum  non  laedas,"  137. 

MEDICAL 

preparation,  ingredients  of,  misrepresentations  as  to,  674. 


Index  839 

(  References  are  to  pages  ] 

MEDICINE 

extravagant  claims  for,  680,  693. 

MERCHANDISE,  DRESS  OF 

classification  of  cases  involving^  244. 

collocation  of  features,  which  might  be  copied  singly,  is  unfair,  239. 

deception  may  arise  from  manner  of  printing,  237. 

degree  of  similarity  calculated  to  deceive,  235. 

designs,  devices  and  figures,  245. 

general,  233. 

imitation  of  single  feature,  238. 

mere  diversity  of  color  not  a  controlling  feature,  236. 

resemblance  in  several  features  may  be  fair,  if  these  are  common  to  trade, 

242. 
signatures  and  initials,  246. 

MERCHANDISE,  NAMES  OF 

abbreviations  of,  100. 
acquired  or  secondary  meaning  of,  577. 
appealing  to  the  eye  as  similar,  93. 
artificial  words  or  names  as,  91. 
copying  exactly  a  name  used  by  another,  92. 
degree  of  similarity  calculated  to  deceive,  235. 
descriptive  of  construction  necessary  to  article,  88. 
duty  to  differentiate  goods  from  those  already  on  the  market,  282. 
foreign  words  as,  99. 
initials  as,  103,  106. 

may  be  known  by  name  of  goods  only,  maker  being  unknown,  77. 
numerals  and  letters  as,  103. 
to  designate  grade,  103. 

source  or  origin,  105. 

series,  106. 
scientific  words  as,  90. 
unfamiliar  and  scientific  words  as,  90. 
which  have  the  same  sound,  idem  sonans,  95. 

MIDDLEMAN 

(See  Jobber.) 

MISCELLANEOUS 

forms  of  unfair  competition,  547  et  seq. 

MISCONCEPTION 

of  true  meaning  and  scope  of  doctrine  of  unfair  comp)etition,  1. 
regarding  right  of  every  man  to  use  his  own  name  in  business,  117. 


840  Index 

( Beferences  are  to  pages  | 

MISLEADING 

use  of  label  proper  in  itself,  248. 

MISREPRESENTATION 

as  to  ingredients,  674,  680. 

as  to  maker  of  goods,  684. 

as  to  manufacture,  681. 

as  to  origin  of  goods,  681. 

as  to  place  of  manufacture,  681. 

as  to  unessential  details,  686. 

by  laudatory  or  exaggerated  phrases,  691. 

by  use  of  term  "Patented,"  "Copyrighted,"  or  "Registered,"  687  et  seq. 

by  salesman,  631. 

claiming  falsely  to  be  corporation,  694. 

defense  that  plaintiff  is  causing,  in  his  business,  671. 

discontinued  before  suit  brought,  673. 

effect  of,  385. 

implying  claim  of  monopoly,  687. 

instances  of  harmless,  694. 

inaccuracies  and  exaggerations  do  not  always  constitute,  674. 

in  advertising  matter,  688. 

must  be  as  to  subject-matter  of  suit,  670. 

must  be  intentional  and  material,  674. 

single  misstatements  not  a,  674. 

to  customers  to  procure  breach  of  contract,  368. 

usually  affirmative  defense,  672. 

MISSTATEMENTS 

of  quality  or  quantity  in  re-selling  unfair,  254. 
single,  not  misrepresentation,  674. 

MONOGRAMS 

(See  Letters,  Devices.) 

MONOPOLY 

fallacy  of  argument  of  monopoly  in  family  name  cases,  118  et  seq. 

false  claim  of,  687. 

in  trade  secrets,  298. 

misrepresentations  implying  claim  of,  687. 

trade-mark  does  not  confer,  379. 

trade  secret  is  not,  298. 

MOTION  PICTURES 

may  reproduce  characters  in  books,  522. 
titles  of,  532. 


Index  841 

1  References  are  to  pages  1 

MOTIVE 

relation  of,  to  interference  with  business  of  another,  299. 
of  defendant,  613  et  seq. 

MOVING 

plant  or  business,  effect  of,  216. 

MULTIFARIOUSNESS 

(See  Pleading.) 

MULTIPLICITY 

of  suits,  interference  with  contract  by  bringing,  369. 

MUSICIANS 

names  of,  used  in  business  not  transferable,  37. 

MUTILATION 

of  marks  upon  packages,  360. 

NAMES 

abbreviations  of,  100. 

abstract,  of  objects,  differ  from  business  names,  81. 
acquired  generic  or  secondary  meaning  of  personal,  137. 
action  on,  exclusive  right  to  name  not  necessary  to  action  for  unfair  com- 
petition on,  2,  26. 
ambiguity  in,  82. 

an  article  may  have  more  than  one  trade  name,  101. 
artificial  or  made-up,  91. 

association  between  name  and  person  using  it,  120. 
association  of,  with  goods  of  unknown  maker,  77. 
assumed,  registration  of,  33. 
attaching  to  places,  43  et  seq. 
changes  in  meaning  of,  through  use,  66. 
changing  one's  name  voluntarily,  151. 

personal  names  voluntarily,  151. 
concealment  of  part  of,  effect  of,  248. 
considered  as  transitory  or  personal,  local  or  fixed,  82. 
corporate,  161.      (See  Corporate  Names.) 

may  be  enjoined  though  adopted  in  good  faith,  623. 
decree  correcting  confusing  use  of,  651. 

directing  use  of  full  name  in  place  of  mere  surname,  125. 
derived  from  names  of  places,  right  to  use,  43,  190. 
descendants  may  use  father's  name  fairly,  155. 
descriptive  of  construction  necessary  to  an  article,  88. 
differ  from  marks,  designs,  etc.,  80. 

duty  of  incorporators  to  differentiate  name  of  new  company  from  existing 
names,  171. 


842  Index 

I  Beferences  are  to  pages  ] 

NAMES— Continued. 

effect  on,  of  relative  locations  of  plants  of  rivals,  212. 

extent  of  reputation  of,  necessary  to  create  secondary  meaning,  71. 

false  or  misleading,  use  of,  185. 

famih',  as  generic  or  general  names  of  articles,  143. 

incapable  of  exclusive  appropriation,  118. 

sale  of  right  to  use  for  known  fraud.    (See  Family  Names.) 
father  and  son,  use  of  same  name  by,  in  same  business,  158. 
foreign,  99. 

words  as,  99. 
fraudulent  use  of  coincidences  in  meaning  of,  101. 
geographic.     (See  Geographical  Names.) 
idem  sonans,  95. 

identity  of  owners  need  not  be  known,  77. 
initials  as  names  of  goods,  106. 

made  up  of  surnames  qualified  by  other  words  or  symbols,  148. 
making  names  unduly  prominent,  may  be  unfair,  40. 
may  be  descriptive  indicating  general  qualities,  3. 
may  be  sold  so  as  to  preclude  owner  from  again  using  them  in  same 

business,  39,  42. 
names  or  marks  may  not  be  sold  distinct  from  article  to  which  they  are 

attached,  43. 
necessity  for  protection  in  one's  own  name,  116. 
numerals  and  letters  as  names  of  goods,  103. 
of  buildings,  177. 
of  cities,  213. 
of  corporations,  effect  of  state  charters  on,  163. 

right  to,  on  dissolution,  166. 

family  names  as,  172. 
of  employers,  right  of  ex-employee  to  use,  86. 
of  goods  intended  for  export,  108. 
of  goods,  unfamiliar  or  scientific  words  used  as,  90. 
of  hotel,  rights  of  lessee  in,  85. 
of  hotels,  82.    (See  Hotels.) 

right  of  owner  of  premises  in,  83,  84. 
of  localities  go  with  places  on  sale  of  them,  42. 
of  natural  products,  217. 
of  patented  articles,  404. 
of  places  as  trade  names  on  goods,  may  be  sold,  43.    (See  Geographic 

Names.) 
of  places,  secondary  meaning  of,  75. 
of  predecessors,  continuing  use  of,  86. 
of  unincorporated  societies  and  clubs,  186. 
one's  right  to  use,  protected  by  equity,  116. 

personal  or  family  name,  nature  of  right  to  use  one's  own  name,  116,  403. 
place  names  governed  by  same  rules  as  other  trade  names,  226. 


Index  843 

( References  are  to  pages  I 

NAMES— Continued. 

plea  of  necessity  of  use  of  particular  name,  173. 

prestige  which  the  public  attaches  to  family  names,  115. 

presumption  that  no  one  intends  to  part  with  right  to  use  his  own,  39. 

priority  in  use  of,  86. 

protection  afforded  by  law  not  limited  to  exact  or  formal  name,  82. 

publici  juris,  89. 

test  of,  when  word  becomes,  708. 
purchase  of,  for  fraudulent  purpose,  36. 
recent  demand  for  protection  of,  116. 

removal  of  business  house,  effect  of,  on  name,  216.    (See  Site.) 
right  to  corporate  name  on  dissolution,  58. 

right  to  exclude  use  by  others  of  certain  words  and  names  limited,  80. 
right  to  use  one's  own  name  in  business,  57, 116. 

denied  to  one  who  abuses  it,  134. 
rule  that  it  is  necessary  to  show  that  name  capable  of  exclusive  use,  119. 
sale  of,  preventing  further  use  of,  40. 
sale  of  business  name  by  originator  of  an  article,  56. 
sale  of  business  site,  effect  of  on,  42. 

sale  of  one's  name  to  one  who  has  no  right  to  use  it,  149  et  seq. 
secondary  meaning  of,  28. 

substitution  of  nickname  for,  creates  secondary  meaning,  71,  note. 

need  not  be  acquired  in  limited  territory  only,  73. 

plaintiff  must  prove  existence  of,  70. 

of  geographical  names,  203. 

a  question  of  priority,  not  wideness  of  repute  of  name,  73. 

of  semi-geographical,  230. 
semi-geographic,  **  Hoosier,"  "  Empire  State,"  etc.,  230. 
similarity  of,  595. 

as  appealing  to  the  eye,  93. 

basis  of  presumption  of  fraud,  626. 
statutes  as  to  choice  of,  171. 

substitution  of  nicknames  for,  creates  secondary  meaning,  71,  note, 
summary  of  law  of,  by  Lord  Kay,  81. 
trade  names  differ  from  general  or  abstract  names,  81. 

not  assignable  in  gross,  44. 
transfer  of,  for  fraudulent  purposes,  150,  note  54. 
use  of  geographic,  must  be  truthful,  226. 

must  be  reasonable  and  honest,  173. 

one's  own  name  on  goods  unfairly  copied,  283. 

without  consent  of  owner,  247. 
value  of,  based  on  usage  in  particular  locality,  76. 
voluntary  change  of  personal,  151. 
which  are  not  transferable,  37. 
which  indicate  origin  or  source  falsely,  208,  681. 
with  double  meaning,  101. 


844  Index 

I  References  are  to  pages  | 

NAMES— Continued. 

"Abricotine,"  394,  406. 

"Aetna  Iron  Works,"  182,  note. 

"Air  Cushions,"  89. 

"Akron  Cement,"  229. 

"Akron  Dental  Rubber"  and  "Non-Secret  Dental  Vulcanite,  made  ac- 
cording to  an  analysis  of  the  Akron  Dental  Rubber,"  237. 

"Alderny,"  394. 

"Allegretti,"  41,  note,  145,  note,  184,  note,  645. 

"  Alpenkrauter  "  and  "St.  Bernard  Alpen  Krauter,"  600. 

"Aluminum,"  392. 

"Amber  Head"  and  "Amber,"  405. 

"American  Ball  Blue  "  and  "American  Wash  Blue,"  48,  note. 

"American  Clay  Manufacturing  Company"  and  "American  Clay  Manu- 
facturing Company  of  New  Jersey,"  163,  note. 

"American  Express  "  sealing  wax,  402. 

"American  Girl"  shoes,  431. 

"American  Grocer  "  and  "The  Grocer,"  98,  535. 

"American  Shoe  Company  "  and  "London  American  Shoe  Company,"  592, 

"American  Watchman's  Clock  Co.,"  181,  note. 

"American  Wine  Co.,"  400. 

"Anatolia,"  208,  402. 

"Angostura,"  73,  note,  217,  note,  398,  682. 

"Antiquarian  Book  Store  "  and  "Antiquarian  Book  &  Variety  Store,"  597. 

"Anti- Washboard,"  394. 

"Apollinaris  "  and  "  London  Apollinaris,"  99,  note. 

"Argyrol,"  397. 

"Army  &  Navy  Co-operative  Society"  and  "Army,  Navy  &  Civil  Service 
Co-operative  Society  of  South  Africa,"  596,  note. 

"Asbestos"  shoes,  439. 

"Atwood's  Vegetable  Physical  Jaundice  Bitters,"  681. 

"Autola  "  and  "Au-to-do,"  435. 

"Balm  of  a  Thousand  Flowers"  and  "Balm  of  Ten  Thousand 
Flowers,"  676. 

"Barber's  Knives  "  and  "Edward  Barber,"  148,  note. 

"Beats-all,"  448. 

"Bedford  Inquirer  "  and  "Bedford  Patriot,"  57,  note. 

"Belgravia"  magazine,  528. 

"Bell's  Life  in  London  and  Sporting  Chronicle"  and  "The  Penny  Bell's 
Life  and  Sporting  News,"  98,  536. 

"Benedictine,"  685. 

"Bestyette,"448. 

"Be  Sure  to  Work  the  Horse  "  and  "Always  Work  the  Horse,"  75,  267, 
630. 

"  Bethesda  Mineral  Spring"  and  "  Glenn  Bethesda  Mineral  Water,"  217, 402. 

"Bingham  School"  and  "William  Bingham's  School,"  158,  note. 


Index  845 

I  References  are  to  pages  ) 

NAMES— Continued. 

"Birdsboro  Trap  Rock,"  402. 

"Birthday  Scripture  Text  Book"  and  "The  Children's  Birthday  Text 

Book,"  526,  note. 
"Black  Caps  "  medicine,  439. 
"Black  Capsules  "  medicine,  439. 
"Black  Swan  Distillery,"  44,  note,  76. 
"Blount  Door  Checks,"  405. 
"Blue  Label,"  253. 
"Blue  Lick  Water,"  211,  note,  402. 
"Bokol,"  406. 

"Bon  Ton  "  and  "Gazette  du  Bon  Ton,"  538  note. 
"Booth's  Theatre,"  44,  note. 
"Boston  Peanut  Roasting  Co."  and  "Boston  Trade  &  Peanut  Roasting 

Co.,"  179,  note. 
"Boston  Wafers,"  74. 
"Boy  Scouts,"  shoes,  437, 438. 
"Brassiere,"  406. 
"Brilliant,"  392,  439. 
"British-America,"  tobacco,  440. 
"Bromo-Caffeine,"  394. 
"Bromo  Quinine,"  385,  679. 
"Brooklyn  White  Lead  Company,"  598. 

"Brookwood"  whiskey,  437.  ^ 

"Brown's  Iron  Bitters  "  and  "Brown's  Iron  Tonic,"  148,  600. 
"Brothers  and  Sisters  of  the  Evening  Star  Society  "  and  "Sons  and  Daugh- 
ters of  the  Evening  Star  Society,"  164,  note. 
"Brown  Windsor  Soap,"  704. 
"Budweiser,"  99,  note,  219,  262,  note. 
"Bull  Dog  Bottling,"  230,  note. 
"Bull  Durham,"  213,  note. 
"Bull's  Head  Mustard,"  245. 
"Burgess  Atomizer,"  284. 
"Caledonia  Water  "  and  "Natural  Saline  Water  from  the  New  Springs  at 

Caledonia,"  218,  note. 
"Camel's  Hair  Belting,"  70. 
"Cameron's  "  clothing,  147,  note. 
"Carbolineum,"397,435. 

"Carlsbad  Sprudel  Salz  "  and  "Kutnow's  Improved  Effervescent  Carls- 
bad," 99,  note,  207,  note,  210. 
"Carmel,"  398. 
"Carroms,"  394. 

"Cashmere  "  and  "Violets  of  Cashmere,"  99,  note,  227,  note. 
"Cascarets  "  and  "Castorets,"  98. 
"Cascarets"  and  "Cascara,"  266. 
"Castoria,"  251,  note,  266,  290. 


846  Index 

r  References  arc  to  pages  ) 

NAMES— Continued. 

'Castle  Brewery,"  and  "Castle  Vaults,"  596,  note. 

'Cavite  "  cigars,  211,  note. 

'Cedarine,"  393. 

'Celluloid,"  98,  397. 

'Celery  Compound,"  394. 

'Ceresota,"  397. 

'Chancellor  Club"  and  "Club,"  435. 

'Chantecler  "  and  "Clianticlair,"  531,  note. 

'Charles  Forde's  Bile  Beans  for  Biliousness,"  679. 

'Charley's  Aunt"  and  "Charley's  Uncle,"  531,  note. 

'Charter  Oak  Stoves,"  92,  note. 

'Chartreuse,"  98,  252,  402,  440,  696. 

'Chatter-box  "  and  "Chatter  Book,"  99,  519,  528. 

'Chemico  Repair  Outfit,"  272. 

'Chicago  Waists,"  228,  note. 

'Chickering  "  pianos,  157,  note. 

'Chologestin  "  and  "Chologen,"  435. 

'Civil  Service  Boot  Supply,"  595,  note. 

'Circular  Loom,"  439. 

'Clark's,"  152,  note,  262,  note. 

'ClubSoda,"93,  note,  689. 

'Club  Cocktails,"  397. 

'Clysmic  Spring  "  and  "Clysmic  Water,"  218,  note. 

'Coca-Cola,"  394,  448. 

'Cocoine  "  and  "Cocaine,"  98. 

'Columbia,"  400. 

'Col.  Willet"  with  representation  of  colonial  officer,  and  portrait  of  Col. 

Anthony  Wayne,  435. 
'Commercial  Advertiser  "  and  "New  York  Commercial,"  98. 
'  Comfort "  and  "  Home  Comfort,"  99,  note,  540,  note. 
'Computing,"  392. 
•Condy's  Fluid,"  253. 

'Congress  "  and  "High  Rock  Congress,"  99,  note,  397. 
'Conserva  di  Tomate,"  406. 

'Conveyance  Company  "  and  "London  Conveyance  Company,"  8. 
'Cottolene  "  and  "Cotosuet,"  91,  note,  397. 
'Cough  Cherries,"  394. 
'Creamalt  "  and  "Crown  Malt,"  282. 
'Cream  Baking  Powder,"  439. 
'Cromac  Springs,"  211,  note. 
'Crookston  Marble  &  Granite  Works  "  and  "Crookston  Marble  Works," 

77,  note,  181,  note. 
'Crow  Whiskey,"  448. 
'Crystal  Beer,"  439. 
'Crystallized  Egg,"  392. 


Index  847 

I  Beferences  are  to  pages  ] 

NAMES— Continued. 

"Cuticura,"  98,397. 

"Cutter's  Whiskey,"  and  "J.  H.  Cutter— Old  Bourbon,"  "J.  F.  Cutter, 
son  of  the  late  J.  H.  Cutter,"  156,  note. 

"Cyclops  Machine  Works  "  and  "Cyclops  Iron  Works,"  17,  note. 

"C.&C."  capsules,  393. 

"Dairymaid  Brand,"  101. 

"Davids"  ink,  448. 

"Day  &  Martin's  Blacking,"  8,  note,  114, 117. 

"DeBevoise  Brassiere  "  and  "H.  &  W.  Brassiere,"  100. 

"Deer  River  Plows,"  216. 

"D.  F.  Taylor  &  Co."  and  "L.  B.  Taylor  &  Co.,"  249. 

"DeLong  Hook  &  Eye,"  172,  note,  405. 

"Democratic  Republican  New  Era"  and  "New  Era,  revived  by  Richard 
Adams  Locke,  its  original  editor,"  536,  note. 

"DeYoungs  "  and  "The  Youngs,"  112,  note. 

"Dodge's  "  stationery,  176,  note. 

"Don  Caesar  "  and  "Don  Carlos,"  242,  note. 

"Dr.  Drake's  German  Croup  Remedy  "  and  "Dr.  Drake's  Famous  German 
Croup  Remedy,"  148,  note. 

"Dr.  Eliot's  Five-Foot  Shelf  of  Books,"  and  "Dr.  Eliot's  Famous  Five-Foot 
Shelf  of  World's  Greatest  Books,"  518. 

"  Dridrip,"  393. 

"Dr.  Morse's  Compound  of  Yellow  Dock  Root"  and  "Dr.  Morse's  Im- 
proved Yellow  Dock  and  Sarsaparilla  Compound,"  95. 

"Druid  Mills,"  49,  note. 

"Dr.  Ward's  Liniment,"  302. 

"Duryea's  Starch,"  153,  note. 

"Eagle,"  397. 

"East  Indian,"  385,  400. 

"Elastic  "  bookcases,  394. 

"Elastic  Seam  "  and  "Stretchiseam,"  92,  note,  289,  392. 

"El  Cavio  "  and  " El  Cabio,"  270. 

"El  Falcon  "  and  "El  Falco,"  151,  note. 

"Elgin,"  400. 

"Encyclopaedia  Britannica,"  527,  note. 

"Erect  Form  "  corset,  90,  note. 

"Erminie,"  529,  note. 

"Ethiopian,"  402. 

"Eureka,"  93,  note. 

"Evergreen,"  439. 

" Every  Day  Soap  "  and  "Everybody's  Soap,"  269. 

"Extract  of  Night  Blooming  Cereus,"  678. 

"Farmers'  Loan  &  Trust  Co.,"  188. 

"Farmers'  Loan  &  Trust  Co.  of  Kansas,"  188. 

"Faultless,"  393. 


848  Index 

I  Befercnces  arc  to  pages  ] 

NAMES— Continued, 

"Farthest  North.    Nansen,"  and  "The  Fram  Expedition,  Nansen  in  the 

Frozen  North,"  520,  note,  527. 
"Fels-Naptha  Soap  "  and  "Naptha  Soap,"  72,  note. 
"Fibre  Chamois,"  395. 

"Flaked  Oatmeal"  and  "Gillespie's  Flaked  Oatmeal,"  90,  note. 
"Flare  Front,"  283,  393. 
"Flavel's  Patent  Kitchener,"  687. 
"Fleischmann,  Vienna  Model  Bakery,"  etc.,  and  "Schuckmann's  Genuine 

Vienna  Bakery,"  224,  note. 
"Flor  de  Dindigul"  and  "Cigarro  de  Dindigul,"  213,  note. 
"Formerly  of  the  Newark  Coal  Co.,"  88,  note,  110. 
"Formerly  Operator  at  the  Colton  Dental  Rooms,"  87,  note. 
"Forsythe  Waists  "  and  "Foresight  Waists,"  96. 
"Frank  Leslie's"  and  "Frank  Leslie,  Jr.'s  Sporting  &  Dramatic  Times," 

151,  note. 
"Fruit  Vinegar,"  385. 
"German  Household  Dyes"  and  "Excellent  German  Househdid  Dyes," 

99,  note,  267. 
"German  Sweet  Chocolate"  and  "Sweet  German  Chocolate,"  94,  101, 

401. 
"Germea  "  and  "Golden  Eagle  Germ,"  265. 
"Georgia  Coon,"  "Coon  Molasses"  and  "  New  Coon,"  599,  693. 
"Getwell,"  439. 
"Gilka-Kummel,"  708,  note. 
"Glenboig,"  210,  note. 
"Glenfield  Starch,"  73,  note,  99,  192. 
"Gold  Dust,"  33,  96,  271,  628. 
"Golden  Crown  "  and  "Golden  Chain,"  266. 
"Gold  Medal,"  385,  398. 
"Gouraud's  Oriental  Cream  and  Magical  Beautifier,"  and  "Creme  Oriental, 

by  Dr.  T.  F.  Gouraud's  Sons,"  158. 
"Grand-Ma's"  and  "Mother's,"  436. 
"Grape-Nuts"  and  "Grain-Hearts,"  98,  270. 
"Green  Mountain,"  213,  note,  401. 
"Green  Ribbon"  and  "Green  River,"  435. 

"Gruber  Almanack  "  and  "J.  Gruber's  Hagerstown  Almanac,"  685. 
"Guinea  Coal  Co.,"  and  "Pall  Mall  Guinea  Coal  Co.,"  87,  note,  99,  note, 

192,  592. 
"Guaranteed  to  Contain  Landreth's  Extra  Early  Peas,  Provided  the  Seal 

is  Unbroken"  and  "This  Bag  Contains  Landreth's  Extra  Early  Peas, 

Provided  the  Seal  is  Unbroken,"  152,  note. 
"Guth's  Chocolates,"  159. 
"Habana,"  682. 

"Half  Spanish"  cigars,  385,  437. 
"Hall's  Safes,"  155. 


Index  849 

I  Bererences  are  to  pages  I 

NAMES— Continued. 

"Hall's  Vegetable  Sicilian  Hair  Renewer"  and  "R.  P.  Hall's  Improved 

Preparation  for  the  Hair,"  41,  note. 
"Hamburg  Tea,"  241. 
"Havoline"  and  "Valvoline,"  436. 
"Hazleton  Boiler  Company  "  and  "Hazelton  Tripod  Boiler  Company," 

165,  note. 
"Health  Food"  and  "Sanitarium  Health  Food,"  99,  note. 
"Hemy's  Royal  Modern  Tutor  for  the  Pianoforte"  and  "Hemy's  New 

and  Revised  Edition  of  Jousse's  Royal  Standard  Pianoforte  Teacher," 

526,  note. 
"Henderson"  and  "Anderson,"  436. 
"Home  "  and  "Home  Delight,"  99,  note. 
"Hire's  Root  Beer,"  146,  note. 
"Hoff"  and  "Leopold  Hoff,"  435. 
"Hohner  "  and  "Improved  Hohner,"  99,  note. 
"Honeymoon"  and  "Honeycomb,"  94. 
"Holeproof,"  394. 
"Holloway's  Pills,"  37,  note. 
"Hero"  and  "Heroine,"  98. 

"Hosford's  Acid  Phosphate  "  and  "Liquor  Acidi  Phosphorici,"  98. 
"Hostetter's  Bitters,"  145,  note,  256,  268. 
"Hotel  Dominion  "  and  "New  Dominion,"  85,  note. 
"Hotel  Vonderbank  "  and  "Cafe  Restaurant  Vonderbank,"  42,  note. 
"Howe  Grain  Cleaner  Co.,"  180,  note. 
"Howqua's  Mixture,"  677. 

"Hoyt's  German  Cologne  "  and  "Hoyt's  Egyptian  Cologne,"  244. 
"Huntsman  Cherry  Brandy,"  101. 
"Hunyadi,"  398,  708. 
"Hydronon  "  and  "Hydrocide,"  435. 
"Hygieniques  "  suspenders,  395. 
"Hygeia  Water,"  73,  note,  394. 
"Ideal,"  394,  397. 
"Imperial"  beer,  398. 
"Improved  Orb"  footballs,  563. 
"Indian  Pond,"  401. 
"  Insectine  "  and  "  Instantine,"  95. 
"Insurance  Oil,"  395,  598,  689. 

"International  Trust  Co."  and  "National  Loan  &  Trust  Co.,"  170. 
"Inter-phone,"  393,  439. 

"Iron-Ox  Tablets  "  and  "Compound  Iron  Oxide  Tablets,"  97. 
"Irving  Hotel,"  84,  note,  98. 
"Italian"  underwear,  401. 
"Ivory  Soap,"  378, 595. 

"  Johann  Hoff's  Malt  Extract"  and  "Hoff's  Malt  Extract,"  125,  note. 
"Johfl  BuU  Beer"  and  "John  Bull,"  92,  note. 


850  Index 

( References  are  to  pages  | 

NAMES— Continued. 

"John  KniRht's  Primrose  Soap,"  668. 

"Johnson's  Anodyne  Liniment,"  268. 

"Junket  Tablets  "  and  "Junket  Capsules,"  72,  note. 

"Kaiser"  beer,  398. 

"Kantleek,"  439. 

"Keepclean,"  393. 

"Keystone  "  line  of  steamers,  231,  note. 

"Key  Stone  "  grease,  397. 

"Keystone  Lubricating  Co."  and  "Keystone  Oil  Co.,"  231,  note. 

"Keystone  Maid"  cigars,  231,  note. 

"Knights  of  Pythias  "  and  "Improved  Order  of  Knights  of  Pythias,"  187, 
note. 

"L'Aiglon,"  530,  note. 

"Lake  Huron,"  40L 

"Lai  Mohur,"  "Lai  Chap,"  587. 

"Lamb  Knit"  and  "Lamb  Stitch,"  183,  note. 

"La  Presse  "  and  "La  Presse  Libre,"  540. 

"La  Tosca  Social  Club"  and  "Original  La  Tosca  Social  Club,"  186, 
note. 

"LePage's  "  and  "LePage's  Improved  Liquid  Glue,"  40,  note,  254,  note. 

"Liebig's  Extract  of  Meat"  and  "Liebig's  Fluid  Beef  Co.,"  "Liebig  Beef 
Co.,"  44,  note,  269. 

"Lightning,"  395. 

"Liliputian  Bazaar  "  and  "Liliputian  Outfitters,"  140, 

"Little  Jake,"  42,  note. 

"Liverpool,"  401. 

"Los  Angeles  Van,  Truck  &  Storage  Co.,"  402. 

"Ludlow  Valves,"  405. 

"Lumetta"  and  "Limette,"  98. 

"Magnolia  Anti-Friction  Metal"  and  "Magnolia,"  93,  note. 

"Magnetic  Balm,"  395. 

"Maizena"  and  "Maizharina,"  98. 

"Mammoth  "  with  picture  of  prehistoric  animal  and  representation  of  two 
elephants,  436. 

"Manchester  Brewery  Co.,  Ltd."  and  "North  Cheshire  Brewery  Co.,  Ltd.," 
178,  note. 

"Manufacturers  Outlet  Company  "  and  "Taunton  Outlet  Company,"  598. 

"Mappin's  A  1  Quality,"  37,  note. 

"Marvel"  flour,  41,  note,  398. 

"Maryland  Club  Rye  Whiskey  "  and  "Maryland  Jockey  Club  Rye  Whis- 
key," 95,  note,  402. 

"Marguerite,"  398. 

"Matzoon,"  406. 

"Mechanical  Store  "  and  "Mechanics'  Store,"  597. 

"Merchant's  Bank  Company,"  188. 


Index  851 

( Beferences  are  to  pages  ] 

NAMES— Continued. 

"  Merchant's  Joint  Stock  Bank,"  188. 

"Metropolitan,"  398,  401. 

"Metuchen  Inn,"  86,  note. 

"Milkmaid  Brand,"  101. 

"Minneapolis  Flour,"  209,  222. 

"Model  Hats  "  and  "The  Medal  One  Dollar  Hats,"  686. 

"MoUne,"  400. 

"Momja,"397. 

"Moniteur  Universal"  and  "Moniteur  Officiel,"  539. 

"  Monopol  Tobacco  Works  "  and  "North  Pole  Tobacco  Works,"  237. 

"Montserrat  Lime  Fruit  Juice,"  253. 

"Morton's  Special  Delivery"  and  "Morton's  Transfer  Company,"  147, 

note. 
"Morning  Post"  and  "Evening  Post,"  537,  note. 
"Mountain  Dew  "  whiskey,  439. 
"Mount  Vernon  Whiskey,"  238. 

"Moxie  Nerve  Food  "  and  "Standard  Nerve  Food,"  268,  679. 
"Mrs.  G.  B.  Miller  &  Co.'s  Best  Smoking  Tobacco,"  etc.,  and  "Mrs.  C.  B. 

Muller  &  Co.,  Best  Smoking  Tobacco,"  95,  note. 
"Mutt  and  Jeff  "  cartoons,  542,  note. 
"National  Folding  Box  Co.,"  189. 
"National  Folding  Box  and  Paper  Co.,"  189. 
"National  Shirt  Waist  Co.,"  61,  note. 
"National  System  of  Penmanship"  and  "Independent  National  System 

of  Penmanship,"  98,  519,  note,  526. 
"Navy,"  440. 
"Next-to-beer,"  439. 
"New  York  Dental  Rooms"  and  "New  York  Steam  Dental  Company," 

224,  note. 
"Nick  Carter  "  detective  stories,  522,  note. 
"Nickel-In,"  398. 
"No-sag,"  439. 
"No-To-Bac,"393. 

"Norwood"  and  "Norwood  Hall,"  85,  note. 
"No  Wash  Up,"  393. 
"Nubia,"  400,  440. 
"  Number  10  South  Water  St.,"  113. 
"Oakes'  Candies,"  40,  note. 
"Ohio  Liniment"  and  "Chinese  Liniment,"  270. 
"Oil  of  Pine,"  393. 

"Old  Coon  Smoking  Tobacco"  and  "Old  Bachelor  Smoking  Tobacco,"  272. 
"Old  Country  Soap,"  385,  400. 
"Old  Homestead"  and  "New  Homestead,"  283. 
"Old  Dr.  Marshall's  Celebrated  Liniment,"  64,  note. 
"Old  Sleuth  Library  "  and  "Young  Sleuth,  the  Keen  Detective,"  522,  note. 


852  Index 

[  References  are  to  pages  ) 

NAMES— Continued. 

"Old  Style  Nelson  County  Pure  Rye,"  683. 

"Old  Taylor  "  and  "Fine  Old  Kentucky  Taylor,"  147,  note. 

"Old  Tucker  "  and  "J.  C.  Tucker,"  435. 

"Oneida  Traps,"  211,  448. 

"Orange  Grove,"  440. 

"Orient,"  400,  440. 

"Oriental  Cream,"  439,  440. 

"Oriental  Process  Rug  Renovating  Company  "  and  "Oriental  Rug  &  Carpet 
Renovating  Works,"  598. 

"Osborne  House,"  49,  note. 

" Oval  Blue  "  and  "Bobby  Blue,"  72,  note. 

"Oxford  Bibles,"  222. 

"Parabola,"  397. 

"Parcheesi,"  99,  406. 

"Paris  "  garters,  401. 

"Penberthy"  and  "Lee-Penberthy,"  184,  note. 

"Pepper  Whiskey,"  385. 

"  Pepto-Mangan  "  and  "  Pepto-Manganate  of  Iron  and  Cascara,"  90,  note, 
394. 

"Perry's  Medicated  Mexican  Balm"  and  "Truefitt's  Medicated  Mexican 
Balm,"  677. 

"Pessendede  Watches,"  108. 

' '  Philadelphia  Beer,  "112,  note. 

"Philadelphia  Cream  Cheese,"  225,  227,  note,  402. 

"Pillsbury's  Best  XXXX  Minneapolis,  Minn.,"  and  "L.  F.  Pillsbury's 
XXXXXXX,  Best  Patent,  Minnesota,"  146,  note. 

"Pinet"  and  "Pinet's  Special  Boots  and  Shoes,"  151,  note. 

"Pinosyne"  and  " Peptenzyme,"  436. 

"Plant  Brothers  "  and  "Michel  Plant  and  Seed  Company,"  102. 

"Plasmon"  and  "  Plasmonade,"  97,  note. 

"Police  Gazette  "  and  "The  U.  S.  Police  Gazette,"  539,  note. 

"Portland"  and  "Famous  Portland,"  99,  note,  226. 

"Pride  "  and  "Pride  of  Syracuse,"  99,  note,  398. 

"Prince's  Metallic  Paint,"  661. 

"Queen  "  and  "Queen  Quality,"  99,  note,  398. 

"Quinnebog,"401. 

"Racket  Store  "  and  "New  York  Racket  Store,"  598. 

"Radiant  Home  Stoves,"  599. 

"Radium,"  397. 

"Radstock  Coal  Works,"  etc.,  206,  note. 

"Railroad  and  Engineering  Journal"  and  "The  American  Railroad  Jour- 
nal," 537,  note. 

"Rainbow  Twist"  and  "The  Best  Twist,"  265. 

"Rainer  Beer  "  and  "Rhinegold  Beer,"  267. 

"  Reading  Biscuits,"  214,  note. 


Index  853 

[  Beferences  are  to  pages  ] 

NAMES— Continued. 

"Receipt  of  old  Dr.  Pitcher  "  and  "Formula  of  old  Dr.  Pitcher,"  266. 

"Red  Cross,"  385. 

"Remington  "  and  " Remington-Sholes,"  174,  note. 

"Revere  House,"  84,  note. 

"Rex"and"Rexall,"96. 

"Richon-le-Zion,"402. 

"Rosendale  Cement"  and  "Anchor  Rosendale  Cement,"  200,  note. 

"Roof  Leak,"  393. 

"Rough  on  Rats"  and  "Rough  on  Skeeters,"  94. 

"Rowland's  Army  &   Navy  Paregoric  Tablets"   and   "Army  &   Navy 

Paregoric  Tablets,"  99,  note. 
"Rowley  Artificial  Limbs,"  125,  note. 
"Royal"  and  "Royal  London,"  99,  note. 
"Royal  Baking  Powder,"  125,  note,  262,  note,  398. 

"Roy  Watch  Case  Company"  and  "Camm-Roy  Watch  Case  Co.,"  99  note. 
"Rubberset,"  393. 
"Ruberoid,"  392. 

"Rugby  Portland  Cement,"  203,  note. 
"Sanitas"  and  "  Condi-Sanitas,"  99,  note. 
"Santa  Ana,"  400. 
"  Sapolio  "  and  "  Saponit,"  99. 
"Sapolio  "  and  "Sapho,"  267. 
"Saponifier,"  251,  note,  394,  397. 
"Saratoga  Vichy,"  707. 
"Sarony,"  150,  note,  176,  note. 
"Sawyer's  Crystal  Blue  and  Safety  Box,"  and  "Sa win's  Soluble  Blue  and 

Pepper  Box,"  262,  note. 
"Schnapps,"  250,  406,  677. 
"Sea  Island  Cotton,"  230. 
"Security,"  393. 
"Sefton,"  401. 

"Seixo  "  and  "Seixo  de  Cima,"  212,  note. 
"Self-loading,"  439. 

"Shawknit,  Seamless  Half  Hose  "  and  "Half  Hose,  Double  Heels,"  106. 
"She  "  cigars,  92,  note,  549. 

"Sherlock  Holmes  "  and  "Sherlock  Holmes,  Detective,"  20,  note,  530,  note. 
"S.  Howes  Company  "  and  "Howes  Grain  Cleaner  Company,"  64,  note. 
"Silex,"  42,  note. 
"Silverpan,"  71,  note. 
"Singer  Sewing  Machines,"  405. 
"Six  Little  Tailors"  and  "Six  Big  Tailors,"  98,  597. 
"Sliced  Animals,"  395. 
"S.  N.  Pike's  MagnoHa  Whiskey,"  47,  note. 
"Social  Register  "  and  "Howard's  Social  Register,"  427,  note. 
"Sorosis"  and  "Sartoris,"  "Sartoria,"  "Satoria,"  96. 


854  Index 

I  References  are  to  pages  | 

NAMES— Continued. 

"Sozodont"  and  "Kalodont,"  "Zodenta,"  436. 

"Spearmint,"  393. 

"Sportsman  Special  Quality,"  101. 

"Standard,"  439. 

"Standard  Scales"  and  "Standard  Computing  Scales,"  9& 

"Star  "  and  "Lone  Star,"  99,  note. 

"Steinway  "  pianos,  97. 

"Stephens'  Blue  Black  "  and  "Steelpen's  Blue  Black,"  95. 

"Sterling  Ale,"  and  "Worcester  Sterling  Ale,"  rm. 

"Sterling  Silk  Company"  and  "Stirling  Silk  Manufacturing  Company," 

599. 
"St.  Louis  Lager  Beer,"  215. 

"Stonebraker'e  "  and  "Dr.  Stonebraker's,"  150,  note. 
"Stone  Ale,"  73,  note,  197. 
"Storm's  Liver  Regulator,"  156,  note. 
"Stuart's  Dyspepsia  Tablets  "  and  "Dr.  Stewart's  Dyspepsia  Tablets,"  97, 

note,  589. 
"Svenska  Snusmagasinet,"  406,  597. 
"Sunlight"  and  "American  Sunlight,"  99,  note. 
"Sunshine,"  394. 
"Syrup  of  Figs,"  384,  675. 
"Taylor's  Persian  Thread,"  401. 
"Taylor  Whiskey,"  437. 
"Tea  Rose  "  flour,  74,  397,  418. 
"Teller,"  394. 
"T.  FeUx  Gouraud's  Oriental  Cream  and  Magical  Beautifier  "  and  "Creme 

Oriental  by  Dr.  T.  F.  Gouraud's  Sons,"  158. 
"The  Accident  Co.,"  180,  note. 
"The  American  Girl,"  401. 
"The  Come  Back,"  533,  note. 
"The  Crown  "  and  "Crown  Combined  Mowing  and  Reaping  Machine,"  43, 

note. 
"The  Good  Things  of  'Life'"  and  "Spice  of  Life,"  522,  note. 
"The  Old  Joseph  Hall  Agricultural  Works,  No.  10  South  Water  Street, 

Rochester,  New  York,"  and  "The  Glen  &  Hall  Manufacturing  Company, 

Number  10  South  Water  Street,  Rochester,  N.  Y.,"  113. 
"The  Pictorial  Ahnanack,"  641. 
"Thermogene,"  393. 
"The  Velvet  Kind,"  393. 
"Thorley's  Food  for  Cattle,"  177. 
"Tipo,"  406. 

"Toasted  Corn  Flakes,"  600. 
"Tobasco,"  400. 
"Toothache  Gum,"  267,  392. 
"Tower  Palace  "  and  "Tower  Palace  Carpet  Store,"  205,  note. 


Inde5^  855 

(  Beferences  are  to  pages  i 

NAMES— Continued. 

"Triplex  Blocks,"  405. 

"Trowbridge's  Chocolate  Chips  "  and  "Chocolate  Chips,"  56,  note. 

"Turnin,"  401. 

"Tussaud's  "  and  "Louis  Tussaud,  Limited,"  149,  note. 

"Twin  Brothers,"  yeast,  42,  note. 

"Un  Amour  Vrai  "  and  "Larmes  d' Amour,"  523,  note. 

"Uneeda  "  crackers,  397. 

"Union  Made  "  and  "Union  Leader,"  243. 

"United  States  Dental  Association  "  and  "U.  S.  Dental  Rooms,"  HI,  note. 

"United  States  Frame  &  Picture  Company"  and  "New  York  Frame  & 
Picture  Company,"  599. 

"University  of  Philadelphia,"  599. 

"Vacuum  Cup,"  393. 

"Valentine"  and  "Valentine's  Valtine  Meat  Globules,"  153,  note. 

"Valvoline,"  397. 

"Van  Stan's  Stratena  Co.  Cement"  and  "Victor  F.  Van  Stan's  Cementive," 
156,  note. 

"Vassar  Chocolates,"  168. 

"Velvet"  candy,  272. 

"Vertical  Top  "  cigar,  291,  405. 

"Victor  "  and  "Victoria,"  436. 

"Vienna,"  401. 

"Virgin  Leaf,"  394,  395. 

"Vitae-Ore"  and  "Vitilizing  Ore,"  96. 

"Vulcan"  and  "Vulture,"  266. 

"Walnut  Grove  Dairy,"  258. 

"Wamsutta  "  and  "Wamyesta,"  98. 

"Waterfill  and  Frazier  Whiskey"  and  "Waterfill  and  Frazier,  Distillers, 
etc.,"  159. 

"Wearever,"  394. 

"Webster's  Dictionary,"  291,  525,  527. 

"West  End  Distillery,  Honeymoon,"  and  "East  End  Distillery,  Honey- 
comb," 94. 

"  What  Cheer  House,"  83,  note. 

"Whirling  Spray  "  and  "Whirl  Spray,"  89. 

"White  House,"  398,  402. 

"  Whitstable  Oysters,"  221,  note. 

"Wonderful  Magazine  "  and  "New  Series  Improved,"  10. 

"Woodbury's  Facial  Soap  "  and  "Woodbury's  New  Skin  Soap,"  40,  note. 

"Worcester  "  and  "Worcester  China,"  220,  note. 

"Worcestershire  "  and  "Improved  Worcestershire  "  Sauce,  220. 

"Worth"  and  "Our  Worth,"  435. 

"Yorkshire  Relish,"  221,  263,  709. 

"Young  Women's  Christian  Association"  and  "The  Young  Women's 
Christian  Association  of  Chicago,"  167,  note. 


§56  Index 

1  Rcrerences  are  to  pages  ] 

NATURAL  PRODUCTS 

names  of,  217. 

NECESSITY 

plea  of,  of  use  of  particular  name,  173. 
nephew,  right  to  use  name  of  uncle,  154,  155. 

NEWSPAPERS 

have  character,  reputations  and  individuality,  538. 

locality  served  by  each,  important  in  fixing  rights  to  names,  540. 

names  of,  535. 

one  who  has  sold  out  a  newspaper  may  set  up  anew,  in  same  locality,  57. 

sale  of,  42. 

NEW  YORK  COURTS 

position  of,  352. 

NEW  YORK  PENAL  CODE 

provision  against  false  statements  as  to  goods,  etc.,  500. 

NICKNAMES.     (See  Catchwords.) 
based  on  designs  used  on  goods,  245. 
creating  secondary  meaning,  71. 
"Equitable,"  170. 
family  names  as,  147. 
for  books,  526,  note  37. 
in  trade,  82,  100. 
in  trade,  value  of,  170. 

of  competitor,  use  of  in  advertisements,  actionable,  100. 
of  rivals,  incorporating  under,  169. 

or  catchwords  in  trade,  corporate  names  used  as,  170,  183. 
use  of  part  of  corporate  name  as,  170. 
"Winchester,"  170. 

NON-USER 

common  law  trade-mark  may  be  lost  by,  30. 

general  rule  as  to,  695. 

length  of,  to  warrant  presumption  of  intent  to  abandon,  697. 

NOTICE 

accounting  of  profits  refused  when  statutory  notice  not  used,  721. 

cautionarj',  use  of,  704. 

improper  use  of,  170. 

of  change  of  management,  going  out  of  business,  etc.,  502  et  seq. 

of  infringement,  733. 

of  pendency  of  suit  may  be  given  by  circular,  496,  505. 

of  registration,  467. 


Index  857 

I  Beferences  are  to  pages  1 

NOTICE— Continued, 
of  user,  8. 

to  defendant  of  existence  of  contract,  in  actions  for  interferences  with  con- 
tracts, 345,  348. 
(See  Circulars.) 

NUMERALS 

as  names  of  goods,  103. 

as  trade-marks,  407. 

indicating  source  or  origin,  105. 

to  denote  grade  of  goods,  103. 

to  indicate  style,  106. 

used  in  a  series  do  not  constitute  a  trade-mark,  106, 107. 

use  of,  to  designate  series,  106. 

use  on  repair  parts,  107. 

"30,"  104. 

"40,"  104. 

"Ill,"  104. 

"60,"  104. 

"70,"  104. 

*'R  12,"  104. 

"303,"  105. 

"H.  H.  6,"  105. 

"523,"  105. 

"830,"  106. 

"3^,"  "1,"  "2,"  "3,"  "8,"  286. 

OBLITERATION 

of  marks  upon  packages,  360. 

OBSTRUCTION 

of  competitor's  customers,  550. 

OFFICERS 

of  corporation  as  parties  defendant,  638. 
duties  of  as  to  trade  secrets,  320. 

OMISSION 

of  name  from  directory,  487. 

ONE'S  OWN  NAME 

use  of,  denied  to  one  who  abuses  it,  134. 

"  ONLY  HIGH  GRADE  " 

use  of  phrase,  692. 


Index  859 

( References  are  to  pages  ] 

PARTIES— Continued. 

officers  of  corporation  may  be  made  defendants,  637. 

plaintiff  in  action  on  geographic  names,  who  may  be,  200. 

plaintiff,  who  may  join  as,  200  et  seq.,  637,  638. 

stockholders  not  proper  parties  defendant  in  action  against  corporation, 

639. 
those  controlling  corporation  may  be  made  defendants,  638. 
to  action  for  unfair  competition,  637. 

unknown  principal  or  proprietor  may  be  sued  through  agent  as  sole  defend- 
ant, 639. 
who  may  be  made  defendants,  637. 

PARTNER 

decree  as  to  use  of  partnership  names  by  ex-partner,  655. 
effect  of  locality  on  sale  of  share  of  good-will  by  partner,  57. 
retiring,  53. 

right  of,  to  name,  52. 

right  to  solicit  customers,  51,  53. 

dissolution  by  death  of,  60. 
right  of  remaining,  to  state  they  are  continuing  old  business,  59. 
right  to  partnership  name  on  dissolution,  57. 
rights  of  partners  in  partnership  name  on  dissolution,  57. 
unfair  use  of  name  of  former,  58. 
use  by  retiring,  of  own  name,  limited,  51. 

who  sells  share  of  good-will  in  partnership  cannot  compete  in  same  locality, 
57. 

PARTNERSHIP 

dissolution  by  agreement,  52. 

by  death,  60. 

implied  contract  as  to  retiring  partner  resuming  business,  57. 

right  of  family  of  deceased  partner  to  name,  60. 

right  to  name  in  absence  of  special  provision,  59. 
name  of,  may  be  protected  against  corporations  formed  with  a  name  similar 

to  partnership  name,  172. 

similarity  of,  to  corporate  names,  and  differences,  161. 
name  on  dissolution,  57. 
name,  right  of  retiring  partner  to,  52. 
rights  of  one  who  owns  a  trade-mark  when  he  enters  the  partnership,  to  that 

mark,  87. 
use  of  term  "Works,"  Company,"  etc.,  by,  181. 

PARTS 

copjdng  a  single  feature  or  part,  284. 

or  features,  copying  many  of,  of  an  article,  239. 

of  machinery,  etc.,  sale  of.    (See  Repair  Parts.) 


860  Index 

i  Beferences  are  to  pages  I 

PASSENGERS 

contract  with  transportation  company,  343. 

PASSING-OFF 

English  name  for  unfair  competition,  2. 
goods  of  third  party,  561. 

PATENTS 

copying  articles  after  expiration  of  patents,  288. 
effect  of  expiration  of,  288. 

expiration  of,  effect  on  name,  82. 
effect  of  expiration  of  patents  on  right  to  make  and  sell  repair  parts,  289. 
expiration  of  and  unfair  competition,  288. 
sale  of  parts  of  patented  goods  after  patent  expires,  285,  286. 

PATENT-CLAIM 

misrepresentation  by  claim  of,  687. 

PATENT  OFFICE 

rules  of,  relating  to  trade-marks.    (See  Appendix  and  Index  Thereto.) 

*'  PATENTED  " 

use  of  term,  222,  687. 

PATENTED  ARTICLES 

and  those  made  by  secret  process,  difference  between,  360. 

copying  those  on  which  patent  has  expired,  288. 

names  of,  404. 

purchase  of,  carries  right  to  use  name,  291. 

right  to  control  sale  of,  by  contract,  358. 

PENDENCY  OF  SUIT 

circulars  giving  notice  of,  496. 

PERCOLATION 

of  water,  stopping  of,  with  intent  to  injure,  329. 

PERIODICAL 

(See  Magazines.) 

PERSONAL  LIBEL  AND  TRADE  LIBEL 

difference,  477. 

PERSONAL  NAME 

(See  Family  Name.) 
acquired  generic  or  secondary  meaning  of,  137. 


Index  861 

I  References  are  to  pages  ] 

PERSONAL  NAME— Continued, 
early  cases  dealing  with,  121. 
may  become  trade-mark  susceptible  of  registration  under  Ten  Year  Law, 

445. 
right  to  use  as  business  name,  117  et  seq. 
voluntary  change  of,  151. 

PERSONALITY 

good-will  attaching  to,  83,  280,  281,  287. 

PERSONAL  RIGHTS 

in  hotel  names,  84. 

PERSUADING 

another  to  break  a  contract,  327  et  seq. 

PERSUASION 

procuring  breach  of  contract  by,  346. 

use  of,  to  procure  breach  of  contract,  injunction  against,  338. 

PETITION 

form  of  prayer  in,  649. 

PHOTOGRAPH 

use  of,  without  consent  of  subject,  247. 

PHOTO  PLAYS 

title  of,  533. 

PHYSICAL 

requirements  of  articles,  591. 

PHRASES 

(See  Trade  Phrases.) 

PLACARDS 

libelous,  injunctions  against,  474. 

PLACE 

eifect  of  moving  business  plant,  216. 
names  may  acquire  abstract  meaning,  207. 
of  manufacture,  misrepresentation  as  to,  681. 

name  of,  right  to,  43. 

relation  of  trade  name  or  mark  to,  160. 
right  of  buyer  of  a  place  to  use  name  on  goods  made  there,  44,  45. 
(See  Location;  Geographical  Names.) 


862  Index 

[  References  are  to  pages' 

PLACE  NAMES 

(See  Geographical  Names.) 

PLANT 

effect  of  moving,  216. 

PLAYS 

imitation  of,  535. 

names  of,  528. 

unfair  competition  in  connection  with,  528. 

PLEADING 

answer,  574. 

certainty  and  particularity,  572. 

defense  of  "unclean  hands,"  577. 

essential  allegations,  575. 

intent  to  deceive,  when  necessary,  625. 

(See  Chapter  II.) 
jurisdictional  facts,  573. 
what  allegations  held  sufficient,  575. 

insufficient,  576. 
what  questions  may  be  raised  by  demurrer,  576. 

PORTRAITS 

not  registrable,  433. 

registration  of,  441. 

transfer  of,  47. 

use  of,  without  consent  of  owner,  247. 

PRAYER 

of  petition,  form  of,  649. 

PREDECESSOR 

continuing  use  of  name  of,  685. 

PREFIXES,  SUFFIXES,  ETC. 

use  of.  159. 

PRELIMINARY  INJUNCTION 

(See  Injunction.) 
directing  use  of  explanatory  phrase,  644. 
instances  of  delay  which  have  been  held  to  bar,  705. 
laches  may  bar,  705. 

may  require  stipulation  by  plaintiff  as  to  future  conduct,  644. 
on  hearing  of,  important  and  basic  facts  will  not  be  determined,  643. 
pending  trial,  642. 


Index  863 

[  References  are  to  pages  ) 

PRELIMINARY  INJUNCTION— Continued, 
sometimes  essential  to  justice,  647. 
when  issued,  640  et  seq. 
will  not  be  granted  where  evidence  conflicting,  641. 

PRESUMPTION 

"Every  person  must  be  understood  to  have  intended  to  do  just  what  is  the 
natural   consequences  of  his  act  deliberately   done,"   614,  616,  621, 
622,  625. 
of  acquiescence  does  not  arise  from  exclusive  right  alone,  703. 
of  continuance  of  acts,  as  evidence,  604. 

of  contract  between  employer  and  employee  not  to  disclose  secret,  306,  308. 
of  fraudulent  intent,  622,  625. 

of  fraud,  based  on  selling  goods  so  that  vendees  may  pass  them  off  fraudu- 
lently, 629. 

based  on  unimportant  facts,  625. 

from  acts  not  likely  to  happen,  624. 

from  general  attempts  to  copy,  627. 

from  manner  of  telling  the  truth,  631. 

from  similarity  of  get-up  or  name,  626. 

from  similarity  of  sound  of  names,  93. 

from  threats  of  suit  not  followed  up  by  suits,  494. 

from  voluntary  adoption  of  or  change  of  name,  151. 

in  face  of  contract  provisions,  622. 

in  use  of  name  of  an  incorporator  in  naming  a  corporation,  179. 
of  intent  cannot  be  based  on  unimportant,  improbable  facts,  625. 
of  intent,  from  defendant's  acts,  264,  581,  622. 

to  deceive  on  part  of  incorporators  from  similarity  of  names,  178. 

to  bring  about  necessary  consequences  of  one's  acts,  614,  616,  note  21, 
622,  625. 
of  intent  to  abandon  from  proof  of  non-user,  697. 

arises  in  face  of  defendant's  disclaimer  of  intent,  611,  622. 

from  making  copy  of  another's  goods,  624. 
of  use  of  article,  607. 
that  no  one  intends  to  part  with  right  to  use  his  own  name,  39. 

PRICE  CUTTING 
local,  567. 

PRICE  FIXING 

rule  as  to,  299. 

PRICE  LISTS 

copying,  248, 


864  Index 

I  Beferences  are  to  pages  | 

PRICES 

competition  by  unfair  comparison  of  prices,  568. 
not  a  trade  secret,  311. 
unfair  use  of,  as  means  of  comjietition,  567. 
use  of,  as  decoy,  565. 

to  inflict  injury  on  competitor,  564. 

PRINCIPAL  OR  PROPRIETOR 

unknown  to  public  may  be  sued  through  agent,  639. 

PRINTERS 

may  be  parties  defendant  jointly  with  person  who  does  unfair  acts,  638. 
of  labels,  etc.,  638. 
of  labels,  etc.,  liability  of,  667. 

who  contribute  to  doing  of  unfair  acts  may  be  held  liable  for  unfair  com- 
petition, 549. 

PRIORITY 

geographic  extent  of  trade-mark  rights  based  on,  28. 

in  organization  of  corporations,  effect  on  name,  165,  note  8. 

in  use  of  name  or  mark,  86,  413. 

length  of  time  necessary  to  create  right  of,  180. 

of  use  against  priority  of  invention,  412. 

rights  of,  as  to  name,  not  changed  by  prior  incorporation  of  one  who  was 

not  first  one  to  use  the  name,  181. 
rights  of  the  one  first  in  the  field,  29,  620. 
rule  of,  in  use  of  geographic  or  place  names,  200. 
in  use  of  name  of  corporation,  180. 

PRIOR  RIGHTS 

effect  of  act  on,  464. 

PRIOR  USE 

by  another  will  not  necessarily  preclude  registration,  430. 
knowledge  of,  not  necessary  to  relief,  245. 
of  place  names,  knowledge  of,  86. 

PRIVATE 

brands,  381. 

PRIVILEGE  IN  TORTS 

what  constitutes,  330  et  seq. 

PROBABILITY 

of  injury  ground  of  injunction,  639, 


Index  865 

\  References  are  to  pages  ] 

PROCESS  OF  MANUFACTURE 
geographic  names  indicating,  219. 

PROCURING 

breach  of  contract. 
(See  Contract.) 

PROFITS.     (See  Damages.) 

accounting  of,  barred  by  laches,  703. 

material  delay  bars,  703. 

may  be  ordered  against  one  fraudulently  using  secret,  314. 
as  distinguished  from  damages,  712. 
compensation  to  plaintiff  is  purpose  of  granting,  713. 
court  will  not  speculate  as  to,  or  apportion,  718. 
damage  to  reputation  of  product  to  be  reckoned  with  loss  of,  717. 
deduction  of  expenses  of  defendant  from,  718. 
defense  that  defendant  received  none  of  the,  667. 
given  to  plaintiff  may  be  limited  to  those  resulting  from  defendant's 

fraud,  723. 
manufacture,  cost  of,  deducted  from,  719. 
notice  of  infringement,  733. 
rules  for  computing  amount  due  as,  719. 

for  determining  what  are  and  what  are  not,  729. 
salaries  considered  in  computing,  719, 
sales,  what  are  considered  as,  in  computing,  719. 
use  of  cautionary  notice  on  goods  by  defendant,  704. 
what  may  be  recovered,  724. 
when  an  account  will  not  be  ordered,  720. 
when  reference  to  master  to  determine  refused,  720. 

PROFESSIONAL  NAMES 

not  transferable  in  business,  38. 

PROOF  AFFIRMATIVELY 

of  any  instances  of  actual  deceit  of  customers  not  necessary,  601. 

of  cases  involving  fanciful  name  and  those  involving  secondary  meaning, 

difference  between,  581. 
of  ownership  of  interest  in  mark  only  necessary  to  secure  protection,  26. 

PROOF— BURDEN  OF 

as  to  deceit,  602,  603. 

as  to  exclusive  right  on  claimant,  709. 

as  to  name  already  in  use,  145. 

of  intent,  American  cases  as  to,  615. 

English  cases  as  to,  615. 
to  prove  secondary  meaning  is  on  plaintiff,  70. 


866  Index 

[  References  are  to  pages  ] 

PROPERTY 

in  a  business,  elements  of,  21,  474. 

in  marks  and  names,  relation  to  intent,  608,  609. 

in  names  not  trade-marks,  23,  26. 

in  name  or  mark  not  necessary  to  action  for  unfair  competition,  2,  26. 

in  names  or  marks,  character  of,  17. 

in  trade-marks  recognized  in  1838,  8. 

protection  of,  by  injunction,  against  libel  and  slander,  474  et  seq. 

rights  in  good-will  of  a  business,  25,  31. 

rights  in  marks  not  technical  trade-marks,  23,  24. 

rights  in  a  trade-mark,  388. 

PROPERTY  RIGHT 

effect  on,  of  kind  of  business  in  which  name  is  used,  26. 

in  a  trade-mark  is  a  limited  right,  26. 

in  secondary  meaning,  28. 

in  trade  secrets,  294. 

may  arise  in  name  or  mark  which  is  not  technical  trade-mark,  26. 

protected  by  chancery,  295. 

PROPINQUITY 

effect  of  imitation  depends  very  largely  upon,  592. 

PROPOSED  CONTRACTS 

interference  with,  361. 

PROTECTION 

afforded  by  law  not  limited  to  exact  or  formal  name,  82. 

limited  to  goods  of  same  class,  420. 

of  trade-mark  under  Ten  Year  Law,  444. 

does  not  create  monopoly,  446. 
of  trade  secrets,  296. 
period  of,  456. 

PUBLIC 

defense  that  plaintiff  is  defrauding  and  deluding  the  public,  669. 

protection  of,  28. 

protection  of,  basis  of  unfair  competition,  19,  21. 

right  of,  to  be  dealt  with  fairly,  20,  180. 

PUBLICI  JURIS 

when  names  become,  82,  89,  708. 

PUBLICATION 

divulging  secret  in  confidence  does  not  constitute,  300. 
of  letters,  circulars,  etc.,  constituting  boycott,  486. 


Index  867 

[  References  are  to  pages  ] 

PUBLICATION— Continued. 

of  literary  work  condition  precedent  to  obtaining  copyright,  510. 
of  secret,  effect  of,  299, 
what  constitutes,  511. 

PUBLIC  KNOWLEDGE 

of  secondary  meaning  of  name,  extent  of,  205. 

PUBLIC  POLICY 

use  of  sign  or  word  must  not  be  against,  384. 

use  of  technical  trade-mark  must  not  be  against,  380. 

PUNITIVE  DAMAGES 

(See  Damages.) 

PURCHASE 

by  surviving  partner  of  estate  of  deceased  partner,  60. 

PURCHASING  PUBLIC 

aim  of  unfair  competition  action  to  protect,  18, 19. 

class  of,  intellectual  capacity  of,  habits  of  foreign  purchasers,  586. 

class  of  purchaser  the  law  protects,  586. 

deceit  of  ultimate  purchaser,  not  jobber,  is  the  important  consideration, 

593,  665. 
may  forget  name  of  maker  of  goods  he  buys,  yet  be  deceived. 

(See  Customers.) 
need  not  compare  labels  on  goods  when  buying,  264. 

PURCHASER 

actual  instances  of  deceit  of,  need  not  be  shown,  601. 

care  used  by  average,  585. 

in  bulk  cannot  represent  himself  as  original  maker,  254. 

of  business  of  another,  right  to  use  name  of  predecessor,  86. 

trade  name  passes  to  purchaser  of  whole  business  and  good-will,  58. 

QUALITY 

geographic  names  indicating,  191,  228. 

indicated  by  letters,  words  or  figures,  398. 

misstating  in  selhng,  254. 

of  goods,  fact  that  defendant's  goods  better  than  plaintiff's  no  defense,  661. 

defense  that  defendant's  are  cheaper  than  plaintiff's,  622. 
refilling  containers  with  cheap  goods,  257. 
right  of  public  to  receive  quality  advertised,  20. 

QUIA  TIMET 

applications  in  nature  of,  479,  639. 


868  Index 

[  References  are  to  pages  ] 

RAW  MATERIAL 

use  of  same  by  two  manufacturers,  effect  on  name,  212. 

READING  MATTER 

difference  in,  disregarded  where  there  are  infringements  in  other  features, 

290. 
on  labels,  247. 

RE-BOTTLING 

goods  of  another,  253. 

RECEIVER'S  SALE 

rights  of  buyer  of  whole  business  as  to  name  of  the  business,  49,  note  44. 

REDDAWAY  CASES 

discussed,  12,  70,  390. 

RE-ENTER  BUSINESS 
contract  not  to,  351. 

REFERENCE 

to  determine  profits  when  refused,  720. 

REFILLING 

(See  Bottles.) 

"  REG.  U.  S.  PAT.  OFF." 

use  of  phrase,  467. 

effect  of  not  using  this  notice,  721. 

"  REGISTERED  " 

misrepresentation  by  use  of  word,  687,  690. 

REGISTRATION 

advantages  of,  424. 

appeals  to  the  Commissioner  of  Patents,  453. 

applicant  for,  must  show  exclusive  use,  447. 

application  for,  428. 

by  first  user,  28. 

by  owners,  426. 

cancellation  of,  456. 

by  court  in  equity  suit,  464. 
cannot  validate  trade-mark  not  previously  vaHd,  427. 
certificates  of,  455. 
declaration,  429. 
defense  that  name  of  defendant  is  capable  of,  663. 


Index  869 

[  References  are  to  pages  ] 

REGISTRATION— Continued . 

designation  of  agent  by  non-residents,  431. 

does  not  conclude  any  property  rights  in  a  mark,  426. 

does  not  create  trade-mark,  380. 

effect  of,  424. 

effect  of  evidence  of,  606. 

fees,  457,  458. 

foreign  applicants,  431. 

fraudulently  procured,  465. 

geographical  limits  of,  73. 

in  Treasury  Department  in  aid  of  custom's  service,  466. 

interference  proceedings,  451. 

liability  for  infringement,  458. 

may  be  cancelled  by  order  of  equity  court,  464. 

no  importance  where  name  copied  in  total,  92. 

not  essential  to  validity  of  trade-mark,  380. 

notice  of,  467. 

of  assumed  name,  33. 

of  corporate  names,  163. 

of  labels,  260. 

of  label,  effect  of  not  procuring,  260. 

of  portraits,  441. 

period  of  protection,  456. 

prima  facie  proof  of  ownership,  458  et  seq. 

prior  use  by  another  will  not  necessarily  preclude,  430. 

rules  for  conducting  proceedings,  465. 

under  federal  statute,  459. 

Ten  Year  law,  444. 

does  not  create  monopoly,  446. 
under  United  States  Trade-Mark  Act,  423. 

effect  of,  425. 
who  may  oppose,  448. 

RELIABILITY 

good-will  another  name  for,  31. 

RELIEF 

temporary,  pending  trial  such  as  making  defendant's  name  more  distinct, 
642. 

(See  Remedies.) 
to  entitle  plaintiff  to,  not  necessary  to  prove  deceit  of  any  customer,  593. 

REMEDIES 

applications  in  nature  of  quia  timet,  639. 
confusion  of  color,  form,  size,  etc.,  how  corrected,  652. 
of  names  and  signs,  how  corrected,  651. 


870  Index 

( Beferences  are  to  pages  ] 

REMEDIES— Continued. 

court  does  not  pass  on  defendant's  plans  to  correct  his  unfair  acts,  649. 
damage  to  reputation  of  goods  to  be  considered,  717. 
d(>struction  and  delivery  up  of  offending  articles,  462. 
destruction  of  list  of  customers  fraudulently  obtained,  317, 318. 
exemplary  damages,  372. 
explanatory  phrases,  uselessness  of,  124,  136. 
extent  and  character  of,  633. 
expenses  of  defendant  deducted  from  profits,  718. 
family  name,  injunctions  against  unfair  use  of,  653. 
final  relief,  scope  of  permanent  injunction,  648. 
full  name,  compelling  use  of,  125. 

important  and  basic  facts  not  decided  on  application  for  preliminary  in- 
junction, 643. 
inadequacy  of  present  forms  of  remedy,  136. 
injunctions  against  libel  and  slander  of  goods,  names,  etc. 

(See  Disparagement,  p.  470.) 
injunctions  before  act  committed,  639. 
jurisdiction  of  courts  in  unfair  competition  cases,  636. 
measures  adopted  by  defendant  to  correct  acts,  649. 
necessity  rule,  646. 

now  given  in  unfair  competition  cases  often  inadequate,  136. 
parties,  637. 

partner's  name,  injunction  against  use  of,  653. 
preliminary  injunctions,  643. 

on  hearing  of,  important  facts  will  not  be  determined,  643. 

sometimes  essential  to  justice,  647. 
responsibility  of  manufacturer  for  defective  goods,  635. 
stipulation  as  to  plaintiff's  future  conduct,  644. 
temporary  relief  pending  trial,  642. 
theories  as  to,  633. 
use  of  explanatory  phrases,  645. 

REMOVAL 

(See  Location.) 

of  business,  effect  of  on  name,  216. 

of  plant  or  business,  effect  on  use  of  geographic  names,  216. 

REMOVING 

labels,  254. 

RE-PACKING 

goods  of  another,  254. 

REPAIR  PARTS 

are  numerals  and  letters  used  on,  trade-marks,  107,  285. 
copying,  285. 


Index  871 

( Beferences  are  to  pages  ] 

REPAIR  PARTS— Continued. 

effect  of  expiration  of  patents,  289  et  seq. 
making  repair  parts  after  patent  expired,  285. 
for  articles  manufactured  by  others,  285. 
use  of  name  belonging  to  another  dealer  in  marking,  286. 
use  of  numerals  and  letters  on,  107. 

REPRESENTATIVES 

bribery  of  competitor's,  560. 

REPRINTS 

of  books,  fraud  in,  527. 

REPUTATION 

and  personality,  83,  281,  287. 

extent  of,  71,  note. 

libel  and  slander  of,  470. 

need  not  be  known  by  a  majority  of  people,  205. 

of  defendant  being  greater  than  that  of  plaintiff,  effect  of,  727. 

of  product  or  goods,  lost  through  defendant's  acts,  to  be  computed  with 
loss  of  profits,  717. 

priority  of  use,  not  extent  of  reputation  of  name,  creates  secondary  mean- 
ing, 145. 

RE-SALE  PRICE 

rule  as  to,  299. 

RE-SELLING 

unfair  to  misstate  quality  or  quantity  in,  254. 

RESEMBLANCE 

degree  of,  necessary,  208. 

in  general  appearance  of  label  unfair  competition,  270. 

in  several  features  may  be  fair,  if  these  are  common  to  the  trade,  242. 

RESIDENCE.     (See  Cities.) 

in  a  locality  does  not  give  unlimited  right  to  use  name  of  locality  as  trade 

name,  211. 
right  to  advertise  facts  as  to  former,  on  sale  of  business,  56. 

RETAIL  DEALER 

conditional  contract  between,  and  manufacturer,  inducing  breach  of,  355. 
deceit  of  ultimate  purchaser,  not  jobber  or  retailer,  important,  593,  665. 
defense  that  deception  is  due  to,  664. 

procuring  breach  of  contract  to  sell  only  at  specified  prices,  357. 
(See  Customer.) 


872  Index 

I  References  arc  to  pages  1 

RETIRING  PARTNER 

use  by,  of  own  name,  limited,  51. 

RETIRING  STOCKHOLDERS 

rights  of,  and  others  in  corporate  name,  50. 

RIGHT 

of  descendants  to  family  name,  153. 

of  every  man  to  use  his  own  name  in  business,  57,  116,  117,  119. 

of  one  who  first  uses  surname  in  business,  152,  154. 

of  son  to  father's  name,  159. 

to  exclude  use  by  others  of  certain  words  and  names  limited,  80. 

to  its  name,  effect  of  incorporation  of  business  on  its,  163. 

to  protection  of  court  does  not  depend  upon  any  exclusive  right  to  name 

or  mark,  9. 
to  use  own  name,  presumption  that  no  one  intends  to  part  with,  39. 
transfer  of  names  and  marks  by  descent,  62. 

RIGHT  OF  ACTION 

will  mere  use  of  mark  give,  7. 

RIGHT  TO  TRADE 

not  absolute,  but  qualified,  11. 

RIVAL  TRADERS 

disparagement  of,  470. 

have  right  to  use  public  or  family  names,  3. 

injury  to,  by  pretended  business  competition,  560. 

relative  location  of  plants  of,  effect  of  names,  212. 

ROGERS 

silver  cases,  128  et  seq.,  175. 

RULES  OF  PATENT  OFFICE 

as  to  trade-marks. 

(See  Appendix  and  Index  Thereto.) 

SALARIES 

of  officers,  considered  in  computing  profits,  719. 

SALE.    (See  Transfer.) 

actual,  of  offending  goods  not  necessary  prerequisite  of  injunction,  639. 

and  license  of  trade-mark  rights,  45. 

by  assignee,  48. 

conditional,  of  goods  made  by  secret  formula,  299. 

of  a  business,  effect  of  locality  on,  57, 


Index  873 

I  References  are  to  pages  1 

SALE— Continued. 

of  a  name  or  business  by  originator  of  an  article,  56. 

of  business  site,  42. 

of  entire  business  rights  of  vendor,  38. 

of  inferior  goods  as  usual  quality,  563. 

of  newspaper,  57. 

of  secret,  64. 

right  of  vendor  to  use  names  used  by  concern  he  has  sold,  40,  notes. 

SALES 

agent,  procuring  breach  of  conditional  contract  by,  355. 

expense  of,  deducted  from  profits,  718. 

necessity  of,  416. 

what  are  to  be  considered,  in  computing  profits,  719. 

SALESMEN 

equivocal  statements  by,  631. 

expenses  of,  deducted  from  profits,  718. 

interference  with  competitor's,  368. 

interference  with  contracts  of,  340. 

misrepresentations  by,  631. 

order  partly  arranged  for  prior  to  discharge  of,  belongs  to  employer,  314. 

SALIENT  FEATURES 

(See  SimLARiTY),  263,  590. 

SCANDALOUS  MATTER 

not  registrable,  434. 

SCHOOL 

name  of,  158. 

SCIENTER 

(See  Intent;  also  p.  611,  note.) 

SCIENTIFIC 

words  as  names,  90. 

SCRIPT 

names  written  in,  may  be  registered,  433,  438. 

SECONDS 

sale  of,  as  usual  quality,  563. 

SECONDARY  MEANING 

a  question  of  fact,  77,  600. 

applied  to  word  in  general  use,  when  used  in  trade  sense,  67,  75. 


874  Index 

( Beferences  are  to  pages  ] 

SECONDARY  MEANING-Continued. 

attaching  not  to  name  but  to  shape  or  form,  281. 

definitions  of,  67  et  seq. 

duration  of  user  necessary  to  acquire,  207. 

(See  Names.) 
evidence  to  prove,  596. 
geographical  limits  of,  72. 
general  discussion,  66. 

in  name  acquired  by  agent  of  steamship  line  as  against  owner  of  line,  231. 
may  be  acquired  by  words  in  general  use,  75. 
merely  association,  67. 

need  not  be  recognized  by  all  people,  or  even  a  majority,  73,  205. 
of  family  name,  137. 
of  geographic  names,  68,  203,  228. 
of  names,  75. 

identification  with  plaintiff,  70. 

recognition  in  locality  where  business  is  located  or  goods  sold,  76. 
of  personal  names,  137. 

of  semi-geographic  names,  "Hoosier,"  etc.,  230. 
of  trade  phrases,  75. 

plaintiff  must  prove  existence  of  acquired  meaning,  70.  ' 
proof  in  cases  of,  70. 

question  of  priority,  not  of  wideness  of  repute,  73. 
questions  involved  in,  69,  70. 

rules,  a  legal  recognition  of  value  of  business  reputation,  67.  ' 
statement  of  general  rule,  67,  68,  69. 
ten  year  trade-mark  law,  78. 
title  of  literary  work  may  acquire,  516. 

SECOND-HAND  CONTAINERS 

use  of,  255. 

SECRET  PROCESS 

no  monopoly  on  goods  made  by,  358. 

SECRET  OF  TRADE 

accounting  of  profits  for  unfair  use  of,  may  be  ordered,  314. 

approximation  of,  and  unfair  use  of  name  of  original,  221. 

assignment  of,  carries  right  to  protect,  317. 

at  common  law,  295. 

betrayal  of,  by  employee,  303  et  seq. 

conditional  sale  of  goods  made  by,  299. 

contracts  of  employment  sustain  implied  agreement  not  to  disclose,  306, 

308. 
definition,  294,  295. 


Index  875 

[  References  are  to  pages  ] 

SECRET  OF  TRADE— Continued. 

difference  between  articles  made  by,  and  patented  articles,  as  to  regulation 
of  sale  of,  360. 

between  sale  of  secret  itself  and  sale  of  goods  made  by  use  of  it,  358. 
disclosure  of,  by  employee,  enjoined,  341. 
disclosure  of,  by  employees,  304. 

in  court,  301. 
discovered  by  employee  in  course  of  employment,  304,  309. 
divulging  in  confidence,  not  publication,  300. 
duty  of  corporate  officers  as  to,  320. 
effect  of  death  of  owner  of,  303. 

employee  may  not  disclose,  before  or  after  leaving  employer,  309. 
enjoining  breach  of  contract  forbidding  disclosure  of,  296. 
essentials  of  action  involving,  313. 
facts  of,  are  property,  294. 
form  of  injunction,  319. 
French  penal  statute  regarding,  296. 
information  as  to  where  one  buys  material  not  a  secret,  311. 

obtained  by  agent  may  not  be  afterward  employed  against  principal, 
312. 
is  it  a  monopoly?  298. 

knowledge  of,  obtained  unfairly,  enjoined,  302. 
lawful  discovery  of,  302. 
letters  may  be  secret  property,  321. 

list  of  customers,  fraudulently  obtained,  may  be  ordered  destroyed,  317, 
318. 

is  a  trade  secret,  316. 
name  of  jobber  furnishing  goods  may  be,  314. 
of  trade,  transfers  of,  315. 

one  fraudulently  using,  may  be  compelled  to  account  for  profits,  314. 
owner  of,  may  do  with  it  as  he  likes,  296. 
process,  goods  made  by,  once  sold,  pass  beyond  control  of  maker,  358. 

inducing  breach  of  contract  for  sale  of  goods  made  by  secret  formula, 
357. 
procuring  breach  of  contract  regulating  sale  of  goods  made  by,  enjoined, 

358. 
property  in,  294,  295. 
protection  of,  296. 
publication  of,  effect  of,  299. 
right  of  owner  to  regulate  and  limit  those  to  whom  and  how  goods  shall  be 

sold,  296. 
sale  of  article  made  by  secret  formula,  not  publication  of  formula,  296. 
to  warrant  protection,  likelihood  of  injury  to  plaintiff  from  disclosure  must 

be  shown,  313. 
transfer  of,  64,  315. 
use  of,  without  disclosure  to  others,  305. 


876  Index 

f  Beferences  are  to  pages  ] 

SECRET  OF  TRADE— Continued. 

which  are  unlawful,  not  protected,  312, 

wrongfully  discovered,  title  to,  good  against  all  except  owner  and  assigns, 
303. 

SELECTOR 

of  goods  may  have  trade-mark,  381. 

SELLING 

agents  may  be  parties  defendant  with  manufacturers  of  offending  articles, 

689. 
expenses  of  infringing  goods  may  be  deducted  from  profits,  718. 

SEMI-GEOGRAPHIC  NAMES 
secondary  meaning  of,  230. 

SERIES 

numerals  to  represent,  106. 

SERVANTS 

fraudulent  acts  of,  not  excused  by  orders  of  master  against  such  acts,  624. 
interference  with  contracts  of,  338. 
statutes  against  interference  with,  339. 

SHAPE 

(See  Form.) 
alone,  not  a  trade-mark,  594. 
cannot  be  monopolized,  594. 

combined  with  other  features  producing  likeness  enjoined,  595. 
imitation  of,  591. 
of  bottles,  238,  251. 
of  box,  239. 
of  cigars,  279. 
of  loaf  of  bread,  238,  282. 
oval,  72,  note, 
similarity  in,  594. 
use  of  shape  of  patented  article  on  expiration  of  patent,  288. 

SHORT  NAMES 

for  books,  526,  note  37. 

SIGNATURES 

copying  of  unfairly,  247. 

use  of,  246. 

use  of,  without  consent  of  owners,  247. 


Index  877 

f  Beferences  are  to  pages  ] 

SIGNS 

decree  correcting  confusing  use  of,  651. 

fraudulently  locating,  110. 

may  be  definitely  associated  with  one  locality,  109, 110. 

of  competitors,  misuse  of,  560. 

on  vehicles,  112. 

painting  building  in  peculiar  way  is  a  sign,  110. 

right  of  owner  to  move  a  sign  from  place  to  place,  109. 

right  to  use  signs  already  in  use,  110. 

similarity  in,  fraudulent,  110. 

SILENCE 

(See  Acquiescence.) 
does  not  warrant  inference  of  consent  to  use  by  another,  697. 

SIMILAR  NAMES 

not  registrable,  433,  434. 

instances  of,  as  regards  registration,  435. 

SIMILARITY 

care  used  by  average  buyer,  class  of  persons  using  articles,  method  used  in 

selling  goods,  are  to  be  considered,  585,  586. 
character  of  article  to  be  considered,  586. 
color,  mere  diversity  in,  not  controlling,  236. 
colorable  imitation  often  constitutes,  584. 
comparison  of  articles  not  test  of,  588. 
comparison  by  expert  not  test  of,  584. 
created  without  cause  or  reason,  evidence  of  fraud,  627. 
deceit  of  careless  buyer  not  considered,  585. 

of  ultimate  purchaser  is  important  consideration,  593. 
definition,  582,  583. 

degree  of,  in  dress  of  goods,  calculated  to  deceive,  235. 
direct  comparison  of  articles  themselves  not  usual  test  of,  588.  ' 
distance  between  competitors,  592, 
does  not  mean  exact  likeness,  facsimile,  584. 
effect  of  cheapness  of  article,  588. 
equity  will  not  define  it  exactly,  585. 
evidence  of,  what  is,  581,  582. 
features  common  to  a  trade,  242. 

habits  and  intelligence  of  consumers  to  be  considered,  586. 
in  color,  shape,  size,  594. 

in  construction,  which  is  necessary  to  purpose  of  article,  89,  591. 
in  necessary  physical  requirements  of  article,  591. 
in  packages,  boxes,  cartons,  etc.,  250. 
in  shape,  594. 
in  size,  595. 


878  Index 

f  References  are  to  pages  ] 

SIMILARITY -Continued. 

must  deceive  ordinary  buyer  of  article,  582,  585. 

not  resulting  in  unfair  competition,  89. 

of  corporate  names,  what  is,  187. 

of  geographic  name,  degree  of  resemblance  necessary,  208. 

of  name  or  get-up,  presumption  of  fraud  may  arise  from,  626. 

of  names,  what  is,  187,  595. 

having  double  meaning,  75. 

as  appealing  to  the  eye,  93. 
of  salient  features,  263,  590. 
of  single  feature  or  part,  284. 
of  whole  article,  278. 

shown  by  general  impression,  not  comparison  in  detail,  582. 
side-by-side  comparison  in  court  room  not  proper  final  test  of,  588. 
similarity  in  sound,  idem  sonans,  93,  95. 
test  of,  what  is,  582. 

not  visual  comparison,  but  memory  comparison,  588. 

SIMULATION 

(See  Copying.) 
cases  where  imitation  of  goods  themselves  is  sole  or  essential  feature,  275. 
of  articles  themselves,  275. 
of  distinguishing  features  as  a  whole,  277. 
of  general  get-up,  264. 
of  label  in  which  name  is  principal  feature,  261. 
of  salient  feature  of  label,  263. 
rule  as  to  what  amounts  to,  235. 

SITE  OF  BUSINESS 

sale  of,  effect  on  names,  42. 

SIZE 

alone,  not  a  trade-mark,  594. 

cannot  be  monopolized,  594. 

combined  with  other  features  producing  likeness,  enjoined,  594.  ' 

injunction  against  use  of,  652. 

similarity  in,  594. 

SKILL 

right  to  advertise,  on  sale  of  busness,  56. 

SOCIETIES 

unincorporated,  names  of,  186. 

"  SOLE  AGENT  " 

use  of  term,  686. 


Index  879 

[  References  are  to  pages  ] 

"  SOLE  PROPRIETOR  '» 

misuse  of  term,  551. 

SOLICITATION 

of  customers,  51, 558. 

SOLICITOR 

sale  of  business  by,  54. 

SOURCE 

geographical  names  which  indicate,  228. 
name  indicating  falsely,  208,  681. 
numerals  indicating,  105. 

SPRING 

natural,  right  to  name  on  sale  of,  42, 217. 

STATE  LAWS 

as  to  corporate  names,  163. 

STATUTE 

"Printers  Ink"  model  statute,  634. 

STATUTES 

Trade-mark  Act  of  1870,  426. 
1881,  426. 
February  20, 1905, 426,  et  seq. 

STIPULATION 

as  to  plaintiff's  future  conduct  may  be  required  on  preliminary  hearing,  644. 

STOCKHOLDER 

(See  Corporate  Names.) 
not  proper  parties  defendant  in  action  against  corporation,  639. 
outgoing,  rights  of,  183. 
retiring,  right  to  solicit  customers,  51. 

right  of,  in  corporation  bearing  his  name,  to  use  name  after  sale  of  stock,  51. 
rights  of  retiring  stockholders  to  corporate  name,  50. 
rights  of  stockholder  in  company  bearing  same  name,  183. 
use  of  name  of,  in  name  of  corporation,  limits  to,  177, 182. 

STOCK 

articles  in  common  use,  use  of,  244. 
bottles,  use  of,  244. 
containers,  use  of,  239. 
labels,  549. 
nicknames,  use  of,  246. 


880  Index 

I  Befercnces  arc  to  pages ) 

STONE  ALE 

case,  139, 197. 

STORIES  AND  BUILDINGS 

dress  of,  110. 

fraud  in  location  of,  259,  651. 
(See  Buildings.) 

STREET 

addresses,  112. 

STYLE  OF  GOODS 

numerals  to  represent,  106. 

SUBSTITUTION 

of  inferior  goods  for  better  goods  in  marked  containers,  256. 
of  names  may  create  secondary  meaning,  71  note. 

♦'  SUCCESSOR  TO  » 

use  of  term,  86. 

SUFFIXES,  ETC. 

use  of,  114,  159. 

SUMMARY 

of  English  cases  re  power  of  equity  to  enjoin  libel,  477. 

SURNAME 

(See  Family  Name.) 
acquired  otherwise  than  by  descent,  149. 
qualified  by  other  words  or  symbols,  148. 
rights  of  first  user  of,  152. 
unfair  use  of,  cured  by  use  of  full  name,  125. 
used  as  abbreviation,  146. 

SUSPICION 

that  defendant  may  commit  unfair  act  not  basis  of  injunction  in  trade 
secret  cases,  313. 

TABLET 

of  medicine,  copying  form  of,  239. 

TAGS 

similarity  in,  249. 

TECHNICAL  TRADE-MARK  RIGHTS 

territorial  extent  of,  417. 


Index  881 

f  References  arc  to  pages  ] 

TECHNICAL  TRADE-MARKS 

acquisition  of,  409. 
essential  elements  of,  379. 
features  of  dress  of  goods  as,  380. 
what  are,  definitions,  373,  374. 
(See  Trade-Marks.) 

TELEPHONE  NUMBER 

unfair  use  of,  56. 

TEMPORARY 

relief  pending  trial,  642. 

TEN  YEAR  LAW 

purpose  of,  445. 
protection  afforded  by,  446. 

THEATRE 

good-will  of,  32. 

right  of  lessee  of,  to  use  name  of,  45. 

THIRD  PARTY 

acts  rendered  possible  through,  548. 

defense  that  plaintiff  has  acted  unfairly  to,  669. 

injunctions  against,  549. 

interference  with  contracts  by,  336. 

liable  only  when  guilty  of  unfair  means,  352. 

passing  off  goods  of  a,  561. 

rights  of,  in  name,  121. 

transfer  of  right  to  use  one's  surname  to,  150. 

THREATENED 

acts  may  be  enjoined  before  any  overt  is  committed,  639. 

THREATS 

circulars  threatening  customers  made  with  intent  to  intimidate,  not  to 
fairly  warn  them,  488,  493. 

injunction  against,  482,  494. 

made  to  competitors'  customers  of  suits  against  them  or  the  competitor,  369. 

must  they  accompany  acts  of  interference  with  contract?  341. 

of  prosecution,  491. 

of  prosecution,  theory  that  proof  of  must  exist  to  warrant  issuance  of  in- 
junction against  libel  or  slander,  491. 

of  suit,  interference  with  contract  by,  488. 

presumed  fraudulent  if  not  followed  up  by  suit,  494. 


882  Index 

[  References  are  to  pages  ] 

TIME 

lapse  of,  which  shows  abandonment,  695. 
presumption  of  continuance  of,  604. 

TITLE 

defense  that  title  of  plaintiff  is  not  established,  668. 
of  book  is  descriptive,  513. 

may  acquire  secondary  meaning,  516. 
of  plays,  unfair  competition  in  connection  with,  528. 

TOBACCO 

tags,  249. 

TORTS 

justification  in,  what  constitutes,  329. 
malice,  328,  329. 
privilege,  329. 

TRADE 

interference  with,  unlawful,  12. 

libel  and  personal  libel,  difference  between,  477. 

libels  not  libelous  -per  se,  496. 

or  business,  resemblance  in  features  conmion  to,  242. 

right  to,  not  an  absolute  one,  11. 

TRADE-MARK  ACT 

federal,  annotated,  426  et  seq. 

TRADE-MARK  LAW 

a  development  of  the  common  law,  423. 
Ten- Year  Trade-Mark  Law,  78,  441-442. 
unfair  competition  not  a  subdivision  of,  1. 

TRADE-MARK  LEGISLATION 

history  of,  426. 

TRADE-MARK  RIGHTS 

arising  in  connection  with,  512. 

in  literary  property  same  as  trade-mark  in  connection  with  any  other  mer- 
chandise, 512. 
plaintiff  must  establish  right  to  exclusive  use  in  case  involving,  118. 
sale  and  license  of,  45. 
will  not  accrue  if  goods  not  on  the  market,  415. 

TRADE-MARKS 

acquisition  of  technical,  409. 
adoption  of,  411. 


Index  883 

( References  are  to  pages  1 

TRADE-MARKS— Continued. 

advantages  of  registration  of,  424. 

an  article  may  have  more  than  one,  382. 

assignments  of,  454. 

as  sign  of  identity,  46. 

assignment  of,  without  transfer  of  business,  may  be  valid,  43. 

cancellation  by  court  in  equity  suit,  464. 

cannot  ordinarily  be  transferred  without  business,  46. 

change  in  manufacture  of  goods  affects,  410. 

characteristics  of,  46. 

claimant  of,  need  not  necessarily  be  first  user,  413. 

classification  of,  386. 

consisting  of  names  only,  438. 

deceptively  similar,  435. 

definitions  of,  374,  375. 

descriptive  words  and  devices,  438. 

descriptive  words  not  appropriable  as,  392. 

difference  between  non-descriptive  words  and  words  in  public  domain,  411, 

415. 
different,  for  different  grades  of  same  article,  383. 
differ  from  labels  only  in  name,  235. 

from  trade  names,  386,  389. 
distinctive  script,  438. 
do  not  confer  or  imply  monopoly,  379. 
effect  of  act  on,  464. 
evidence  as  to  use  of  a,  606. 
first  user  of,  rights  of,  620. 
foreign  words,  405. 
fraudulently  used,  463. 
functions  of,  376. 
general  principles,  373. 
geographical  or  place  names,  399. 
geographical  extent  of  rights  in,  74. 
how  they  may  be  acquired,  410. 
included  in  unfair  competition,  388. 
in  connection  with  portraits,  438. 
indicating  selector,  not  maker,  381. 
instances  of  words  denoting  quality  and  not  available  as,  398. 

descriptive,  invalid  as,  392. 

fanciful,  valid,  396. 

geographical,  invalid  as,  400. 

suggestive,  valid,  393. 

words  in  common  use  used  in  arbitrary  sense,  397. 
law  of,  and  law  of  unfair  competition,  difference  between,  23,  24,  388. 
law  of,  is  specialized  branch  of  law  of  unfair  competition,  23. 
letters  of  the  alphabet,  406. 


884  Index 

I  Keferences  are  to  pages  ] 

TRADE-MARKS— Continued . 

may  be  badge  of  quality,  377. 

may  be  created  by  public  usage,  378. 

must  be  aflSxed  to  goods,  383. 

must  not  be  against  public  policy,  384. 

name  of  applicant,  438. 

nature  of,  377. 

no  difference  between,  and  trade  names,  as  regards  rights  required,  17. 

non-essentials  of,  380. 

numerals  as,  407. 

on  goods  of  same  descriptive  quality,  436. 

personal  or  family  names  as,  403. 

principles  involved  in  action  for  protection  of  common-law  trade-mark 

distinguishable  from  those  in  action  for  unfair  competition,  120. 
priority  of  use  as  against  priority  of  invention,  412. 
products  to  which  they  may  be  applied,  381. 
property  in,  recognized  in  1838, 25. 
property  rights  in,  388. 

protection  limited  to  goods  of  the  same  class,  420. 
relation  of  good-will  to,  35. 
registration  not  essential  to  validity  of,  380. 
registration  of,  fraudulently  procured,  465. 
rights  of  foreigners  as  to,  410,  431. 
symbol  of  good-will,  378. 
technical,  essential  elements  of,  379. 
test  as  to  whether  public  likely  to  be  misled,  420. 
territorial  extent  of  rights  in,  417  et  seq.,  427. 
under  Ten  Year  Law,  444. 
unregistrable,  432, 

use  of  geographic  names  as,  must  be  truthful,  226. 
value  of,  measured  by  extent  of  celebrity,  74. 
what  may  be  appropriated  as,  general  principles,  391. 
who  may  acquire  a,  409. 
who  may  oppose  registration  of,  448. 
words  likely  to  deceive  purchasers,  437. 

TRADE  NAMES 

definition,  374. 

difference  between  abstract  names  of  objects  and,  81. 

difference  between  law  of,  and  law  of  unfair  competition,  23, 24. 

differ  from  trade-marks,  76,  386,  389. 

general  principles,  79. 

geographical  names  may  be  arbitrarily  adopted  as,  223. 

goods  can  have  more  than  one,  101. 

libel  and  slander  of,  470. 

no  difference  between,  and  trade-marks  as  regards  rights  acquired,  17. 


Index  885 

I  Keferences  are  to  pages  ] 

TRADE  NAMES— Continued. 

place  names  are  governed  by  same  rules  as  other,  226. 
street  addresses,  etc.,  112. 
summary  of  rules  relating  to  law  of,  81, 82. 
transfer  of. 
(See  Transfer.) 

TRADE  PHRASES 

secondary  meaning  of,  75. 

TRADE  RIGHTS 

geographical  extent  of,  based  on  priority,  28. 

TRADE  SECRETS 

and  confidential  relations. 
(See  List,  p.  294.)     (See  Secrets.) 

TRADE  TALK 

misrepresentation  in,  691. 

TRADE  UNION 

inducing  strike  by,  354. 

TRADING  STAMPS 

interference  with  contracts  regarding,  36L 

TRANSFERS 

by  attorney  of  practice,  54. 

by  originator  of  article  or  business,  56.  ' 

by  partners,  51,  57. 

good  faith  required  in,  46,  175. 

in  bankruptcy  and  assignments  for  creditors,  48. 

name  not  assignable  in  gross,  44. 

name  or  mark  may  not  be  sold  separate  from  article  to  which  it  is  attached, 

43. 
no  one  has  a  right  to  transfer  his  surname  for  use  that  is  unfair,  150, 175, 176. 
of  a  business,  153  et  seq. 

of  business  by  one  using  trade  name  of  another  under  contract,  47. 
of  business,  effect  of  locahty  on,  57. 

of  business  site,  right  of  buyer  to  use  name  of  place  as  trade-mark,  45. 
of  business  site,  effect  of,  on  names,  42. 
of  names. 

(See  Sale.) 
of  names  and  marks  by  descent,  62. 
of  name  to  third  person,  150. 
of  place  name  used  as  name  of  goods  when  place  itself  is  sold,  43. 


880  Index 

[  References  are  to  pages  ] 

TRANSFERS— Continued. 

of  portraits,  47. 

of  secrets,  64, 315. 

of  secret  by  assignment,  carries  right  to  protect  it,  315. 

TRANSPORTATION  COMPANIES 

contracts  with,  343. 

TREASURY  DEPARTMENT 

registration  in,  466. 

TRIVIAL  ACTS 

court  does  not  notice,  668.  "l 

TRUTH 

defense  that  defendant's  representations  are  true,  663. 

equity  will  not  enjoin  against  telling,  664. 

must  be  told  honestly,  664. 

presumption  of  fraud  from  manner  in  which  it  is  told,  631. 

told  fraudulently,  664. 

"  UNCLEAN  HANDS »» 
defense  of,  577,  670. 

UNFAIR  ACTS 

acts  contributory  to,  548. 

done  abroad,  jurisdiction  of  United  States  Circuit  Court  over,  637. 

not  all,  actionable,  2. 

of  competitor  may  be  basis  of  court  action,  35. 

tend  to  do  away  with  competitors,  332. 

UNFAIR  COMPETITION 

acquiring  corporate  stock  for  purpose  of,  568. 

action,  grounds  of,  17, 18,  284. 

action  for,  is  based  on  injury  to  plaintiff,  not  on  intent  of  defendant,  623. 

acts  contributory  to  unfair  acts,  548. 

actual  injury  to  plaintiff  must  be  imminent  for  action  for,  624. 

analogy  between  action  for,  and  infringement  of  copyright,  513. 

and  similarity,  89. 

and  trade-mark  onses,  difference  between,  23,  24,  388. 

awnings,  misuse  of,  88. 

cases,  remedies  now  given  often  inadequate,  136. 

confusing  uses  of  term  by  courts,  547. 

concurrence  deloyale,  French  name  for  doctrine,  16. 

court  seeks  to  protect  good-will  in  cases  >f,  35. 

damages  in  suits  at  law  for,  734. 


Index  887 

I  References  are  to  pages  ] 

UNFAIR  COMPETITION  —Continued, 
recoverable  in  cases  of,  711. 
definitions  of,  12,  31,  174,  547. 
differs  from  technical  trade-marks,  23. 
distinction  between,  and  infringement  of  trade-mark,  387. 
division  of  cases  as  regards  intent,  610. 
doctrine  of,  as  applied  to  literary  property,  514. 
does  not  curtail  freedom  of  honorable  trading,  11. 
does  not  involve  violation  of  any  exclusive  right,  2. 
early  cases  of ,  4. 

exclusive  right  to  name  or  mark  not  necessary  to  action  for,  2,  26. 
failure  of  "explanatory  phrase"  method  of  reUef,  634. 
false  statements  re  competitor,  486. 
forms  of,  2. 

foundation  principle  of,  3. 
fundamental  rule  of,  12. 
good-will  protected  by  law  of,  36. 

grounds  of  action  for,  may  be  protection  of  individual  and  of  public,  18. 
grounds  for  injunction,  19. 
growth  of  doctrine,  6. 
includes  trade-mark,  388. 
in  connection  with  books  and  book  titles,  517. 
in  the  use  of  literary  propertj^  507. 
is  a  question  of  misrepresentation,  10,  15. 
jurisdiction  of  courts  in  cases  of,  636. 
law  of,  foundation  of,  3. 
legal  basis  of  action  for,  17. 

liability  of  officers  of  corporation  in  action  for,  637. 
miscellaneous  and  new  forms  of,  547  et  seq. 
misconception  of  meaning  and  scope  of  doctrine  of,  1. 
name  "unfair  competition"  new,  not  the  doctrine,  11. 
not  a  subdivision  of  trade-mark  law,  1. 

not  confined  to  acts  directed  against  owners  of  trade-marks,  2. 
not  established  by  proof  of  similarity  in  form  or  general  appearance  alone,  89. 
not  included  in  term  "trade-mark,"  1. 
omission  of  name  from  directory,  487. 
passing  off,  English  name  for  doctrine,  2. 
pasting   together  pages  of   almanac    containing   rival's   advertisements, 

487. 
printing  advertisement  in  telephone  book  out  of  alphabetical  order,  487. 
proof  of,  89. 

property  rights  in,  23,  26. 
right  of  action  depends  on  question  of  fact,  3. 
suits  are  founded  upon  damage  to  trade  of  complainant,  27. 
tendency  of  present  growth  of  doctrine,  5. 
theory  that  in  these  cases  court  acts  to  protect  honest  and  fair  dealing,  18. 


888  Index 

I  References  are  to  pages  ] 

UNFAIR  COMPETITION  -Continued. 

that  in  these  actions  court  aims  to  protect  purchasing  public,  18,  19. 
tliat  in  these  actions  court  aims  to  protect,  not  pubhc,  but  individual 

rights,  18,  21. 
that  court  aims  to  protect  association  between  name  and  user  of  it,  120. 
to  constitute,  features  imitated  must  distinguish  plaintiff's  goods  from  others, 

242. 
unfair  comparison  of  prices,  568. 

use  of  nickname  of  competitor  in  advertisements,  100. 
where  use  of  cut  prices  accompanies  unfair  or  inaccurate  description  of 
goods,  567. 

UNFAIR  MARKS 

use  of,  2. 

UNFAMILIAR 

words  as  names,  90 . 

UNINCORPORATED  SOCIETIES.  ETC. 

names  of,  186. 

UNKNOWN  MAKERS 

secondary  meaning,  rights  of,  77. 

UNLAWFUL 

secrets  not  protected,  312. 

USE.     (See  Priority.) 

length,  extent  and  manner  of,  414,  415. 

of  false  advertising,  556. 

of  letters,  circulars,  etc.,  constituting  boycott,  486. 

of  prices  as  decoy,  565. 

to  inflict  definite  injury  on  a  competitor,  564. 
of  sign  or  word  must  not  be  against  public  policy,  384. 
presumption  of,  607. 
priority  in,  412,  413. 

technical  trade-mark  must  be  actually  used  upon  the  goods,  380. 
unfair  use  of  prices  as  means  of  competition,  567. 

USELESSNESS 

of  plaintiff's  goods  no  defense,  669. 

USER 

does  not  always  create  right  in  name,  108,  note. 

duration  of,  necessary  to  acquire  secondary  moaning,  207. 

duty  resting  on  the  newcomer  in  a  commercial  field  to  the  older  concern 

using  the  same  name,  620. 
effect  of,  on  name,  7,  8. 


Index  ggg 

( References  are  to  pagea  ] 

USER— Continued. 

first  user  of  mark,  rights  of,  620. 

may  cause  surnames  to  become  abstract  names,  143. 

no  distinction  between  names  and  marks  as  regards  user,  17. 

time  of,  necessary  to  acquire  priority,  180. 

universal  knowledge  of,  not  required  as  to  geographic  names,  205. 

VALUATION 

of  good-will,  65. 

VALUE 

of  names,  76. 

of  property  rights,  25. 

of  reputation  and  credit  of  business  men,  471. 

of  trade-mark  in  its  salient  features,  94. 

of  trade-marks  measured  by  extent  of  celebrity,  74. 

VEHICLES 

signs  on,  112. 

VENDOR 

competition  of,  with  vendee  after  sale,  38,  40,  49. 

of  a  newspaper,  57. 

of  names,  etc.,  good  faith  required  of,  46. 

(See  Transfer  and  Sale.) 
rights  of,  on  sale  of  entire  business,  38,  58  et  seq. 

VOLUNTARY 

change  of  personal  name,  151. 

WAGONER 

good-will  of,  34. 

WAGONS 

dress  of,  110. 
fraudulent  get-up  of,  257. 

WARNING  TO  DEFENDANT 

against  infringements,  etc.,  494,  495. 
effect  of,  613. 

WHOLESALERS 

procuring  breach  of  contract  to  sell  only  to  specified  retailers,  356. 

WORD 

common  words  used  in  arbitrary  sense,  397. 
foreign,  as  trade-mark,  405. 


890  Index 

I  References  are  to  pages  ] 

WORD— Continued. 

indicating  quality,  superiority,  etc.,  398. 

in  general  use,  when  used  in  trade  sense,  trade-mark  rights  rest  on  sec- 
ondary meaning,  67. 
invented  or  fanciful,  396. 
separation  of  name  into  two  or  more  words,  effect  of,  669. 

WORKMEN 

(See  Employees.) 

WORKS 

or  factories,  good-will  of,  32. 

use  of  term  by  incorporated  company,  181. 

WORTHLESSNESS 

of  plaintiff's  goods  no  defense,  669. 

WRAPPERS 

etc.,  241,  250. 

(See  List,  p.  233.) 
printing  on,  fraudulent,  271,  272. 
rules  of  similarity  of,  250. 

WRAPPING  OF  GOODS 

this  may  be  fraudulent,  248. 

"  &  CO.  " 

use  of  abbreviation,  114. 


LAW  LIBRART 

UNIVERSITY  OF  CALIFORNIA' 
LOS  ANGELES 


UC  SOUTHERN  REGIONAL  LIBRARY  FACILITY 


AA    000  834  236    2 


